Sears v. Gottschalk, 73-1699

Citation502 F.2d 122,183 USPQ 134
Decision Date14 August 1974
Docket NumberNo. 73-1699,73-1699
PartiesMary Helen SEARS, Appellant, v. Robert GOTTSCHALK, Commissioner of Patents, Appellee.
CourtUnited States Courts of Appeals. United States Court of Appeals (4th Circuit)

Edward S. Irons, Washington, D.C., for appellant.

Thomas G. Wilson, Atty., U.S. Dept. of Justice (Irving Jaffe, Acting Asst. Atty. Gen., Brian P. Gettings, U.S. Atty., Leonard Schaitman and Barbara L. Herwig, Attys., U.S. Dept. of Justice, on brief), for appellees.

Before WINTER, BUTZNER and FIELD, Circuit Judges.

WINTER, Circuit Judge:

Suing under the Freedom of Information Act, 5 U.S.C. 552 (FOIA), plaintiff, a patent attorney, sought to enjoin defendant from withholding 'abandoned U.S. patent applications' from her and the public. The suit was instituted because plaintiff's request to make available to her 'all existing abandoned U.S. patent applications' had been denied by the defendant on the ground that the matters sought were barred from disclosure by 35 U.S.C. 122 (1970). The district court concluded that the documents sought were exempt form compelled disclosure on the alternate grounds that they were 'specifically exempted from disclosure by statute,' as provided in 5 U.S.C. 552(b)(3), and that they contained 'trade secrets and commercial or financial information obtained from a person and privileged or confidential,' as provided in 5 U.S.C. 552(b)(4). We conclude that the district court was correct in its conclusion that abandoned patent applications are statutorily exempt from the necessity of disclosure under FOIA. We perceive no constitutional obstacle to this conclusion, and we do not think that a three-judge court was required in order to reach it. We affirm the order of the district court.

I.

A patent application is, of course, an application for the grant of a patent under the provisions of 35 U.S.C. 1 et seq. Patent applications fall into three categories: (a) those in the process of consideration by the patent office-- 'pending applications,' (b) those denied by the patent office as to which the applicant has not sought judicial review, 1 and those abandoned by formal relinquishment 2 or mere default, 3 before the patent office has taken final action-- 'abandoned applications,' and (c) applications which have ripened into the grant of a patent-- 'matured or granted applications.' Plaintiff makes no claim that 'pending applications' should be available for public inspection; indeed, she readily concedes their confidentiality under 35 U.S.C. 122. When applications mature into the grant of a patent, a copy of the specification and drawing of the patent are annexed to the patent, 35 U.S.C. 154, and they are open to the public for inspection and copying. 4 Thus, plaintiff's request was to have access to and examine only those falling into the second category-- 'abandoned applications,' and only those are the subject of suit.

The patent office denies access to or inspection of both pending applications and abandoned applications. As to the latter, indices of abandoned applications are maintained, and the applications themselves or a microfilm thereof have been preserved. While the record does not reflect the fact with certainty, it appears that most, if not all, abandoned applications are extant, although, as might be expected, not all could be produced without some inconvenience and expense. 5 The record indicates that some portions of abandoned applications contain trade secrets. But it is argued that the evidence on this fact was received ex parte and we should conclude that the Commissioner of Patents has failed to satisfy the burden of proof to enable him to claim the 'trade secret' exemption to disclosure. We need not concern ourselves with this contention, however, because we do not reach the district court's alternative holding that the trade secret exemption of FOIA is applicable.

II.

The legal dispute between the parties arises from two statutes. The first is FOIA, which requires each agency 'on request for identifiable records . . . (to) make the records promptly available to any person.' 5 U.S.C. 552(a) (3). Among the exceptions to this mandate are records 'specifically exempted from disclosure by statute,' 552(b)(3). The second statute from which the dispute arises is the provision of the patent title, 35 U.S.C. 122, which states:

Applications for patents shall be kept in confidence by the Patent Office and no information concerning the same given without authority of the applicant or owner unless necessary to carry out the provisions of any Act of Congress or in such special circumstances as may be determined by the Commissioner.

On the merits of the ultimate question, plaintiff contends that the 122 rule of confidentiality applies only to pending applications and not to abandoned applications, and therefore the 552(b)(3) exception to the mandate of 552(a)(3) does not apply. Preliminarily, she asserts that 122 is not the type of statute to qualify for the 552(b)(3) exception, because it authorizes the Commissioner to disclose matters required to be kept confidential if he determines that disclosure is justified. 6

Defendant argues that plaintiff's request to inspect 'all existing abandoned U.S. patent applications' is not a request for 'identifiable records' within the meaning of 552(a)(3), and plaintiff's suit should be dismissed on that basis. On the merits, defendant contends that the rule of confidentiality embodied in 122 applies to abandoned applications as well as pending applications, and that 122 is a statute of the kind contemplated by 552(b)(3), so that plaintiff's request is defeated by 552(b)(3).

III.

We are not persuaded by defendant's argument that plaintiff's request to inspect was so lacking in specificity that the records sought were not 'identifiable records' within the meaning of 552(a)(3). The purpose of the 'identifiability' requirement is to generate a 'reasonable description enabling the Government employee to locate the requested records.' Bristol-Myers Co. v. F.T.C., 138 U.S.App.D.C. 22, 424 F.2d 935, 938 (1970) (quoting S.Rept.No. 813, 89th Cong., 1st Sess. at 8). Although plaintiff's request was far reaching, 7 that purpose was met. Aside from the sheer bulk of the material to which access was sought and the accompanying expense and inconvenience of making it available for inspection, defendant makes no claim that he does not know what plaintiff wishes to see or where to locate it. The case is thus different from Irons v. Schuyler, 151 U.S.App.D.C. 23, 465 F.2d 608 (1972), where access was sought to 'all unpublished manuscript decisions of the Patent Office' and where it appeared that there were more than 4,780,000 files, 'any of which may contain one or more manuscript decisions.' In that case, inspection was denied, but the decision turned on the difficulty of locating the requested records rather than the categorical nature of the request; we, therefore, do not deem it controlling here. If otherwise locatable, the rule in this circuit is that equitable considerations of the costs, in time and money, of making records available for examination do not supply an excuse for non-production. Ethyl Corp. v. Environmental Protection Agency, 478 F.2d 47 (4 Cir. 1973); Wellford v. Hardin, 315 F.Supp. 175 (D.Md.1970), aff'd 444 F.2d 21 (4 Cir. 1971). See also National Cable Television Ass'n, Inc. v. F.C.C., 156 U.S.App.D.C. 91, 479 F.2d 183 (1973); Getman v. N.L.R.B., 146 U.S.App.D.C. 209, 450 F.2d 670 (1971).

IV.

Nor do we see merit in plaintiff's argument that, since the Commissioner may disclose patent applications 'in such special circumstances as may be determined by the Commissioner,' 122 is not the sort of statute contemplated by the (b)(3) exception to the disclosure requirement of FOIA. 8 The question of whether a statute which confers discretion to determine whether to make records of his agency publicly available 'specifically exempts from disclosure' the material over which the administrator has discretion is not without difficulty. Professor Davis resolves this question in favor of the availability of the exception. 9 He reasons that the specific intent of Congress to maintain in secret that which the administrator determines should be so maintained should not be overridden by the more general provisions of the FOIA.

We are aware of only two cases which bear directly on this question. In Evans v. Dept. of Trans., 446 F.2d 821 (5 Cir. 1971), the Fifth Circuit, in an alternative holding said that the (b)(3) exception was available for matters which a statute authorized an administrator to withhold if he found that

disclosure of such information would adversely affect the interests of such person (he who provided the information to the administrator) and is not required in the interest of the public. 10

It is noteworthy that the Congress had provided some standards for the exercise of discretion in the statute under consideration in Evans.

A recent Third Circuit case, drawn to our attention by post-argument memoranda, emphasizes the absence of statutory guidelines for the exercise of discretion in holding that 42 U.S.C. 1306(a), which reads

No disclosure of any . . . report . . . obtained at any time by the Secretary . . . or employee of the Department . . . in the course of discharging their respective duties under this chapter (the chapter on social security) . . . shall be made except as the Secretary . . . may by regulations prescribe . . .,

will not support the (b)(3) exception. Stretch v. Weinberger, 495 F.2d 639, (3 Cir., 1974). However, in Stretch, the court placed equal emphasis on the lack of specificity in the phrase 'any record'-- the definition of the matters to be kept confidential within the Secretary's discretion. The court stated the rule to be that

'matters are . . . specifically exempted from disclosure by statute' only if a statute either identifies some class or category...

To continue reading

Request your trial
19 cases
  • S. Envtl. Law Ctr. v. Council On Envtl. Quality
    • United States
    • U.S. District Court — Western District of Virginia
    • March 18, 2020
    ...recognized in Acumenics Research & Tech. v. U.S. Dep't of Justice, 843 F.2d 800, 803–04 (4th Cir. 1988) ; Sears v. Gottschalk, 502 F.2d 122, 128 n.13 (4th Cir. 1974) (affirming denial of injunction to produce patent applications).11 Other Courts' recent understandings of FOIA's grant of inj......
  • 83 Hawai'i 378, State of Hawai'i Organization of Police Officers (SHOPO) v. Society of Professional Journalists-University of Hawai'i Chapter
    • United States
    • Hawaii Supreme Court
    • November 15, 1996
    ...FOIA request complies with the requirements of section 552(a)(3)(A), the burden imposed on the agency is irrelevant. In Sears v. Gottschalk, 502 F.2d 122 (4th Cir.1974), cert. denied, 425 U.S. 904, 96 S.Ct. 1494, 47 L.Ed.2d 753 (1976), the United States Court of Appeals for the Fourth Circu......
  • Westinghouse Elec. Corp. v. Schlesinger
    • United States
    • U.S. Court of Appeals — Fourth Circuit
    • September 30, 1976
    ...is prohibited under § 1905. 28 We had, to some extent at least, anticipated Robertson in our decision in Sears v. Gottschalk (4th Cir. 1974), 502 F.2d 122 at 128-31. See, also, Citizens for a Better Environ. v. Dept. of Com. (N.D.Ill.1976), 410 F.Supp. 1248, 29 422 U.S. 264-66, 95 S.Ct. 214......
  • Lee Pharmaceuticals v. Kreps, 76-2082
    • United States
    • U.S. Court of Appeals — Ninth Circuit
    • June 29, 1978
    ...FOIA. The Solicitor and later the Commissioner of Patents refused the demand relying upon 35 U.S.C. § 122 and citing Sears v. Gottschalk (4th Cir. 1974) 502 F.2d 122, cert. denied sub nom. Sears v. Dann (1975) 422 U.S. 1056, 95 S.Ct. 2680, 45 L.Ed.2d 709. 1 The Commissioner also told Lee th......
  • Request a trial to view additional results
1 books & journal articles
  • CHAPTER 11 ADMINISTRATIVE PRACTICE BEFORE STATE AND FEDERAL AGENCIES
    • United States
    • FNREL - Special Institute Natural Resources & Environmental Litigation II (FNREL)
    • Invalid date
    ...Co., 415 U.S. 1 (1974). [33] NLRB v. Sears, Roebuck & Co., 421 U.S. 132 (1975). [34] 5 U.S.C. § 552(a)(3); see, also Sears v. Gottschalk, 502 F.2d 122 (4th Cir. 1974), cert. denied, 425 U.S. 904 (1976); Marks v. United States, 578 F.2d 261 (9th Cir. 1978). [35] John M. Seehus (DOE/OHA, 6/24......

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT