Examination Query: Parallel Examination

Lots of times, examiners look at cases in parallel – especially when two cases are filed around the same time by the same applicant and cover similar inventions. The two patents will often issue on the same date with consecutive patent numbers. Are there any special rules, procedures, or counts that apply to this type of parallel examination?

59 thoughts on “Examination Query: Parallel Examination

  1. Yes, continue reading Dayco…
    Especially the part where inequitable conduct is thrown out.

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  2. “The disadavantages of this strategy are the same disadvantage that continuations have: Inequitable Conduct and Prosecution History Estoppel.”
    It’s inequitable conduct to file two applications with identical claims? What’s the basis for that?

    I suggest anyone interested in understanding these and other issues surrounding multiple related applications review the Dayco decision, and then carefully read the ABA Report cited in Dayco.

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  3. “More than a dozen applications filed with the same disclosure on the same day with the same single claim.

    Given the Patent Offices practice of parrallel examination is there an advantage to this strategy?”

    There are literally tons of reasons why an applicant might do this. In this particular case, it is obvious why they did it.

    “Filed: Oct. 19, 2007″

    Why on Earth would an applicant file 30 continuations on October 19th of 2007? What possible terrible event could have been predicted to occur on November 1, 2007 that would cause the Applicant to file large numbers of continuations in October, 2007 without having the time to draft the claims first?

    I am kind of curious to know how many continuations were filed in September and October of 2007.

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  4. Corporate,
    It gets better.
    A quick review of PAIR sheds additional light:
    – publications are continuations of an application that issued to patent shortly after publication applications submitted.
    – large quantity of foreign reference disclosures made in parent one week before publication applications submitted.
    – preliminary amendment made 5/23/08. Unfortunately, an Office Action issues 5/21/08.
    – The Office Action inlcudes a double patenting rejection for 29 co-pending applications (20080091557 through 20080091570 is only roughly 1/2 the picture)

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  5. It’s not imaginary:

    Check out Patent Publication No.s
    20080091557 through 20080091570
    More than a dozen applications filed with the same disclosure on the same day with the same single claim.

    Given the Patent Offices practice of parrallel examination is there an advantage to this strategy?

    It is not my intention to defame anyone. I have a curiosity about a strategy that doesn’t seem to make sense to me given Patent Office practice. Does it make sense to any of you?

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  6. “The disadavantages of this strategy are the same disadvantage that continuations have: Inequitable Conduct and Prosecution History Estoppel.”

    It’s inequitable conduct to file two applications with identical claims? What’s the basis for that?

    The real disadvantage of this “strategy” (of filing multiple, “sometimes dozens” of identical patent specifications with barely distinguishable claims) is that it doesn’t exist. It appears to be a figment of “Corporate’s” imagination, apparently dreamed up in an attempt to defame the attorneys at the law firm that Corporate obliquely refers to above.

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  7. “Bogese” sounds a little too much like “Bogus” to me…

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  8. “Bogese” sounds a little too much like “Bogus” to me…

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  9. Anon

    I don’t know anyone who has used that multiple application filing strategy and I certainly don’t.

    Maybe they use it because if they have to later file a continuation application it will take a long time for it to come up on the examiner’s docket and be examined?

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  10. >I have discovered a group of patent attorneys that take >the strategy of filing multiple (sometimes dozens) of >identical patent specifications with barely >distinguishable patent claims.

    This strategy can work from a financial perspective … i.e. patent filings are expensive, and this eliminates the cost of preparing a specification. This is just the same as filing a continuation, it is just that you are filing all at the same time instead of sequentially.

    The disadavantages of this strategy are the same disadvantage that continuations have: Inequitable Conduct and Prosecution History Estoppel.

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  11. we were just discussing yesterday how the new e-red folder system has slowed everything down. An electronic automation package that doubles and triples examination and administrative delays! PTO is rolling out another monster called PFW which should replace eDAN. This is the PTO’s thing these days. They roll out a new program that’s supposed to be the answer, but it’s always poorly conceived and it takes forever to transfer all the necessary functions into it and then they stop halfway. Examiners end up with a hodge podge of programs that they have to use, and no training on how; we’re left to guess and experiment in our “free” time. Then they roll out a new one which is supposed to consolidate everything. Repeat. At each announcement meeting for each new program the same question is always posed, “Will i receive an email if there’s a problem?” And the same answer, “No, the new program has its own proprietary messaging system (which doesn’t work, yet)”. It’s no surprise that shoes were still in service at the beginning of the 21st century, despite management’s efforts to get rid of them.
    Did you know that examiners have webcams but everyone points them at the wall because they’re afraid of being spied on? Including SPEs. The program we’re given to use them doesn’t work.

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  12. “19 distinct inventions

    You truly are in the bush league.
    Here’s an actual case of mine:

    1) I get a 3 way. Okay I kind of see it so I respond electing one.
    2) Examiner rescinds 3 way after I respond and issues 8 way. Geez – hard to fathom so I elect one (knowing all along 8 way is void ab initio)
    3) Examiner rescinds 8 way and issues 48 way. Yes 48 way, one for each claim whether ind or dep. I go ballistic.
    4) Start calling and get the comment, ‘well it sounds a little excessive.’
    5) We’re back down to 3 and I’m now on appeal.”

    Yet according to PTO (mis)management, the backlog and pendency are solely the fault of applicants and the patent bar.

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  13. Dear ahha

    You got me beat. I will slink back into my hole. You never had to petition though, did you?

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  14. 19 distinct inventions

    You truly are in the bush league.
    Here’s an actual case of mine:

    1) I get a 3 way. Okay I kind of see it so I respond electing one.
    2) Examiner rescinds 3 way after I respond and issues 8 way. Geez – hard to fathom so I elect one (knowing all along 8 way is void ab initio)
    3) Examiner rescinds 8 way and issues 48 way. Yes 48 way, one for each claim whether ind or dep. I go ballistic.
    4) Start calling and get the comment, “well it sounds a little excessive.”
    5) We’re back down to 3 and I’m now on appeal.

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  15. “Gee, I’ve done everything I’m supposed to do. Got my count. It’s somebody else’s problem now.”

    My point exactly. I’ve done what I’m SUPPOSED to do. Now I should move on and examine someone else’s application and let the mail system work its magic. If the system’s broken, fix the system, don’t pile another mindless activity on the examiner.

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  16. good one: “Examiner says 19 distinct inventions, each of the dependent claims is a distinct invention, and then he just repeats each of the dependent claims as his justification.”

    The Examiners must’ve just had a seminar on restrictions. I just got an exceedingly silly one too. Though not as silly as yours – that would be hard to top.

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  17. “The problem is I run into a bureaucratic pinball table, where I get bounced from person to person, each telling me ‘I don’t know what’s going on, why don’t you call this person/department.'”

    That’s why they need to eliminate those persons/departments.

    Spending $1B+ on a system that results in nothing more than the same old incompetent, unmotivated, unprofessional staff shuffling electronic documents around instead of actual paper documents is the height of mismanagement.

    But everybody over there is doing outstanding work. Bonuses for everybody!!!!!!!! Whoooooohoooooo!!!!!!!!!!!!

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  18. I’ve gone out of my way many times to find out what’s wrong with various “counted not mailed” cases and tried to move them along… The problem is I run into a bureaucratic pinball table, where I get bounced from person to person, each telling me “I don’t know what’s going on, why don’t you call this person/department.”

    If I could mail actions myself, I would.

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  19. “If the examiner has completed the action to the satisfaction of whomever signs it (themselves if a primary), and moved it along in the process as far as they have control over, why shouldn’t they get the count?”

    You must be a card carrying member of the Patent Office “Professional” Association.

    “Gee, I’ve done everything I’m supposed to do. Got my count. It’s somebody else’s problem now.”

    Maybe adding mail clerk duties would help. If I had a nickel for every time an examiner told me, “Well, it’s out of my hands (and I already got my count) so I’m sorry, but I can’t help you” I’d be a millionaire.

    The “professionalism” is simply oozing out of the place. (sarcasm off)

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  20. Paul F. Morgan

    You raise an interesting point. If a practitioner files IDENTICAL claims in different applications on the same day, would that be a CLEAR legal/ethical violation if the pratitioner intended to amend the claims by preliminary amendment later?

    Would it be any different if the applications are filed as continuations? After all, continuation practice has often included keeping the same claims in the original application and amending by preliminary amendment.

    This is not a hypothetical question. There are published patent applications on PAIR that show this strategy is being used.

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  21. “And another thing, get rid of this “counted, not mailed” status. No counts until the OA actually goes out the door”

    If the examiner has completed the action to the satisfaction of whomever signs it (themselves if a primary), and moved it along in the process as far as they have control over, why shouldn’t they get the count?

    Are you suggesting that we add mail clerk to the duties of the examiner? Would we each have our own postage machine or would we be responsible to get reimbursed for stamps?

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  22. “CLEAR legal/ethical violations, like the same attorney or agent filing truely IDENTICAL claims in different applcations…”

    What exactly are the clear legal and ethical violations in this example?

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  23. “If examiners would call to the attention of the PTO Office of Enrollment and Discipline CLEAR legal/ethical violations, like the same attorney or agent filing truely IDENTICAL claims in different applcations, without any explanation, noted above, and such reporting got publicised, I would think that sort of conduct might significantly decrease? Just privately complaining does not do much good.”

    And give up the easy counts? And promotions? And bonuses?

    Dream on.

    MCLE for registered practitioners? For what? So we can listen to the “legal experts” from the PTO tell us that In re Bogese gives the PTO the authority to arbitrarily limit the number of continuations that may be filed?

    ROFLMAO

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  24. If examiners would call to the attention of the PTO Office of Enrollment and Discipline CLEAR legal/ethical violations, like the same attorney or agent filing truely IDENTICAL claims in different applcations, without any explanation, noted above, and such reporting got publicised, I would think that sort of conduct might significantly decrease? Just privately complaining does not do much good.

    That and the long-delayed minimal requirements of ANY MCLE for registered practitioners?

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  25. I also think (I’m not a lawyer yet so I don’t know) that this strategy could be useful to disclose many different potential inventions in a single disclosure filed multiple times, and then amend the claims (preferably by preliminary amendment) to claim different things as the market develops.

    I’ve had at least one instance where this seems to have been the case where I picked up the application before the preliminary amendment, and the claims were completely identical (not just close but word-for-word) to another filed by the same applicant on the same day… Easiest FAOM ever…

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  26. “is there any advantage to this strategy?”

    Funny, I didn’t see the phrase “barely distinguishable” on that website. It sounds like a loaded term that you, not them, used. But if you have a cite to one of their pages that uses that phrase, I’d like to be able to read it in context.

    The question is whether the “barely distinguishable” patent claims are meaningfully different in scope. If not, why file them? If they are meaningful, the USPTO excess claim fees encourage filing them in multiple applications. (6 independent claims / 40 total claims in two applications are cheaper to file than in one application)

    Read a few Federal Circuit cases and you’ll quickly learn that infringement/noninfringement and validity/invalidity can turn on a single word, even a preposition. Courts often decide cases on terms that appear indistinguishable at first blush.

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  27. “They proudly bost[sic] this strategy at strategic-patent.com”

    Where exactly do they discuss this strategy?

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  28. “And another thing, get rid of this “counted, not mailed” status. No counts until the OA actually goes out the door”

    I agree. It helps make sure that the OA actually goes out the door (which from the voice of experience doesn’t always happen)

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  29. An LIE is a “legal instruments examiner,” which is a fancy title for “docket clerk.” The LIE’s are supposedly responsible for entering the outgoing and incoming correspondence into the file wrapper.

    MM is correct. Automate that function and eliminate the LIE position. It is beyond useless at this point.

    And another thing, get rid of this “counted, not mailed” status. No counts until the OA actually goes out the door.

    Ridiculous.

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  30. “Examiner says 19 distinct inventions, each of the dependent claims is a distinct invention, and then he just repeats each of the dependent claims as his justification.”

    Out of fear that one or more species could be allowed, but one species could be rejected, many applicants are unwilling to admit that the species are not patentably distinct. Knowing this, examiners can get easy counts by issuing restriction requirements and riding the divisional gravy train, a nice substitute if the continuation and RCE gravy trains every shut down. I am surprised that I haven’t seen more restriction requirements.

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  31. Given this topic I have a query for the patent Examiner posters. I have discovered a group of patent attorneys that take the strategy of filing multiple (sometimes dozens) of identical patent specifications with barely distinguishable patent claims. They proudly bost this strategy at strategic-patent.com.

    With how you descibe Examiner’s responses to multiple filings, is there any advantage to this strategy? To me it seems foolish.

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  32. XMNR–very interesting; I had no idea the internal processing at the PTO was so convoluted. Sorry if I missed it, but what is an L I E?

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  33. I thought workflow requires oldest new case and oldest effective case (DIV or CON) be taken-up each bi-week (about twice per month) — at least that is the least I do.

    Also, SPEs have a bonus for having “date cases” acted on by the end of each quarter. These are defined by each Tech Center to each AU in an attempt to reduce the backlog — my AU’s date goal is everything prior to 11-21-2005. Note that this goal doesn’t appear on individual examiner’s goals, but why antagonize your boss if you don’t have to.

    So, each biweek I must do:

    – Oldest new case
    – Oldest effective case
    – Due amendments (1-month old for those of us trying for the pendency reduction award, 2-months old for everyone)
    – Any special (by petition) case that is docketed
    – Any special amended case (usually an after-final) within 10 days of docketing.

    And for that I get a 0.5% bonus each six-months (I am one of only three–out of about 50–examiners in my AU that even attempts this award).

    THEN I fill-in the counts I need for production either from my amended docket (working RCEs ahead, etc.) or from my new docket. I probably average six new cases acted-on per month (I’m a 110% producer and I work about 10-hours of OT per biweek). I usually end-up sending 15-20 actions per biweek.

    Note that I usually work my cases in date order (see below) but as long as I get the workflow cases moved, no one is going to blink if I “cherry pick” a new case. Personally I don’t see the point, I’ve had 100-claim cases that I can reject with one reference and six-claim cases that needed seven references. By the time I know if a case is going to be a time-hog I’ve got enough hours invested in it to keep going.

    As far as parallel cases — usually I find them during my inventor name search (if they have ODP, they’re ripe for parallel exam.) — and usually they are not wildly out of date order. I figure my being able to efficiently examine two cases “at once” benefits everyone in the long run.

    I’ll join the chorus about filed amendments taking their sweet time to get to our dockets. I just don’t get it. I average one case per biweek that I see has an amendment (usually because I checked after a response time expired) that I have to call an L I E to have docketed. Now with e-Red Folder, I call “my” L I E (who, like my congressman, is one of the good ones) only to find out that its been assigned to someone else for processing and she can’t do anything with it. How efficient.

    I also don’t understand the counted-not-mailed delay (although some is due to second-pair-of-eyes — I do occasionally allow something), especially since many of my cases are on the e-notification pilot so nothing is actually mailed. I have noticed that “specials” (usually after-final advisory actions) seem to be mailing faster now then before, and I understand that this is due to the L I Es now actually being able to see we’ve marked them as special in the e-Red Folder so they act on them faster.

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  34. What a lark!

    Examiner’s read specs?

    We are talking about the U S PTO, right?

    You want to know how many times I’ve responded to a 112 rejection of . . .

    “Claim X is rejected because term Y is indefinite.”

    with

    “Please see page ## line ##, where term Y is explicitly defined”

    ?

    Many times.

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  35. “Then you get all claims examined right?” — I am not quite sure that you understand claims, random person.

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  36. “special dispatch”

    I once heard of a package that was sent priority mail that took over 50 years to arrive. What’s your point? Welcome to the realm of relative terms.

    “In other words, the examiner only wants to examine the one independent claim and one dependent claim.

    SPE sees nothing wrong with it.””

    Maybe you could be specific what is wrong with the 19 species that you claimed being restricted. I bet that the examiner wouldn’t restrict it if you put all 19 species in one dependent. Then you get all claims examined right?

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  37. Thanks for the above-enlightening insider-inputs on PTO “positive workflow balance.” If it really only means having to take up only one old application only once a month, it’s no wonder the PTO refuses to disclose statistics on how many “submarine” patent applications are still lurking submerged in the Office. [Especially, those that will still get 17 years of patent term from their issue date no matter how long ago before 6/8/95 they were filed.]

    BTW, if all of the PTO’s illegally* long pending reexaminations [not just more recently filed reexaminations] [and expecially the long pending inter partes reexaminations] have now been transferred from individual examiners to the relatively new special reexamination team, as someone above has suggested, I have not yet heard about it. Have any of you have seem anything about that?

    *in violation of the express statutory requirement of PTO “special dispatch” handling

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  38. “20 pending claims, namely one independent and 19 dependent.

    Received a restriction/election.

    Examiner says 19 distinct inventions, each of the dependent claims is a distinct invention, and then he just repeats each of the dependent claims as his justification.

    In other words, the examiner only wants to examine the one independent claim and one dependent claim.

    SPE sees nothing wrong with it.”

    Did you call the examiner’s supervisor? I would in that situation.

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  39. 20 pending claims, namely one independent and 19 dependent.

    Received a restriction/election.

    Examiner says 19 distinct inventions, each of the dependent claims is a distinct invention, and then he just repeats each of the dependent claims as his justification.

    In other words, the examiner only wants to examine the one independent claim and one dependent claim.

    SPE sees nothing wrong with it.

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  40. “I believe attorneys do make cases simple for faster examination when they are able to. The problem is, the client doesn’t always want this. Claims are drafted with business considerations in mind first, only then does the prosecutor get to mess with them. I’m not even an attorney yet and I can get that, why does it seem so hard for you?”

    That still doesn’t explain making prosecution harder than it needs to be. It’s easy to tell an attorney who knows how to get things moving and do it with ease as opposed to someone who is going to file 10 pages of worthless arguments, want an interview to discuss at least the lion’s share of them, and then ends up amending just the same as the easy going guy did in the first place (while having 50 claims as opposed to 20 or less). Claims are drafted from the minds of attorneys with business considerations in mind and it’s cake to see who knows what they’re doing and who writes a bunch of jibberish half of which isn’t even enabled, and the other half of which reads on the art you just got through citing. No offense to you guys that do this, but really, come on. Once you’ve worked with the same guys on a few cases you’ll understand this. I understand this, why is it so hard for you?

    Maybe it’s just experience. But usually it doesn’t seem like that’s the case.

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  41. “Eliminate the LIE position and have papers entered automatically, and you’d see a big reduction in that particular delay.”

    AMEN I ha te having my things returned to me because of horse sht that’s generated by either the LIE’s or the system. I ha te the system generated errors more though because you can’t fix it as easily usually, just wait until you get one of those. Many of the things that hold up examiner actions being sent out should be optional but are instead enforced for no apparent reason. I could go on with the plethora of bs that is generated that does nothing more than rack up workflow that shouldn’t even exist for examiners and generate headaches for practicioners. Oh, but it’s a beauraucracy, well come on, we had the paperwork reduction act passed awhile back it’s time to get to making one that reduces the amount of paperwork generated by the gov.

    “Why doesn’t one of these ivory tower professors write a paper about that?”

    Seriously

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  42. I can definitely say I’m glad to be dealing with electronic files rather than paper ones, but there is no excuse at all for electronically filed papers to take so long to docket to us. Frankly, I see little reason for the LIE position to even exist… All they do is enter papers (slowly) that a computer could do instantly, and occasionally pretend they have a patent examiner’s authority. Any “legal instrument examining” that they do can and SHOULD be done by the examiner who has the actual legal authority to make findings of fact… I was quite incensed when an LIE sent an allowance back to me THREE times because of a specification requirement that she made up… I called her on it three times and got it sent back to me with no further input three times, until it finally apparently attracted the attention of her supervisor who then mailed it. Another examiner I know had an allowance sent back because the LIE decided the oath “wasn’t legible.” I’m sorry, but I thought it was up to the examiner to make the decision to object to the oath if it’s not legible…

    Eliminate the LIE position and have papers entered automatically, and you’d see a big reduction in that particular delay.

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  43. “The workflow system certainly is flawed”

    And the surface of the sun is a tad warm, too.

    “The time it takes between filing and docketing is a HUGE problem”

    Well, considering that the PTO spent $1B+ of applicants’ money on the EFS system, and it’s no quicker than the old days of having mail carts pushed around Crystal City, and stacks of papers waiting to be entered into files that are piled up on shelves in central files (and hidden in ceiling tiles), I would say the problem is a little bigger than HUGE.

    Somebody really needs to ask the current (mis)management, “Can you explain why, after spending $1B+, it takes you 4 weeks to enter an amendment filed by EFS into the application and put it on the examiner’s docket?”

    Why doesn’t one of these ivory tower professors write a paper about that?

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  44. The workflow system certainly is flawed; I was just pointing out that there isn’t a COMPLETE lack of control…

    The time it takes between filing and docketing is a HUGE problem, as you’ve pointed out. In some cases it takes even longer than 4 weeks; I recently had to deal with a sudden influx of amendments docketed to me almost 2 months after they were filed!

    Then, even after we’ve acted on a case, there’s maybe a 1 in 4 chance (or so it seems to me) that the case ends up in “counted not mailed” limbo for God only knows how long, and for God only knows what reason… I have an advisory action that’s been counted not mailed for over 2 months now (I called the applicant over a month ago and let them know about it so they can take whatever action they deem necessary to avoid abandonment), and no one here knows why it hasn’t been mailed.

    As for the interference request vs. interference, I realized that just as I finished typing in the code and hitting “post…”

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  45. “Some people make rocket science out of prosecution. Why?”

    Well 6k, er, I mean Random person, when you get out into the world of private practice, you can show us all how it should be done. I’m sure you will teach us all bibles of truth.

    “If you do not maintain a positive workflow balance, you get NO bonuses regardless of production.”

    QQ

    Let’s see, you have to do your oldest new case once a month (every other bi-week, whatever). You have to do your oldest continuing case once a month. You get 2 months to act on amended cases. And that’s after the PTO spends four weeks from the date the response is actually filed (by EFS) til it’s put on your docket. Plus til the end of the bi-week that the 2 month date falls in. Plus until the next first Monday at noon. Or 5:00 PM depending on your TC. And of course, your SPE can wave his/her magic wand and excuse any negative work flow points. If you’re an outstanding 110+% producer, of course.

    Sounds unbearably onerous. How are all of you managing? Maybe you need even more time. Maybe oldest new every 3 months?

    BTW, Paul said interference requests, not interferences. MM, when you get into private practice, maybe your first assignment will be to prepare a response to request that the examiner declare an interference. And if you’re lucky, you may actually get a decision (not necessarily a declaration of interference) before you retire. If you’re lucky.

    LOL

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  46. making cases “simple” may make them invalid under 112.

    it also may mean that alternatives are left out which may prove to be important

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  47. e6k posted “Learn2makecasessimpleifyouwantthemexaminedquickly?
    Some people make rocket science out of prosecution. Why?”

    I believe attorneys do make cases simple for faster examination when they are able to. The problem is, the client doesn’t always want this. Claims are drafted with business considerations in mind first, only then does the prosecutor get to mess with them. I’m not even an attorney yet and I can get that, why does it seem so hard for you?

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  48. Paul is overall correct that “cherry-picking” occurs on examiners’ dockets; however, there are a few misstatements. First and foremost, Paul seems to imply that there is NO docket control at the PTO. This is not the case; examiners not only have to maintain production, but also manage workflow. If a case becomes overdue for action (be it a new case with old filing date or a second, third, nth action on a case that was replied to by the applicant), the examiner loses workflow points. If you do not maintain a positive workflow balance, you get NO bonuses regardless of production. Now, this control isn’t perfect, as you can gain workflow points by doing your amended cases early, but eventually the bottom falls out of that strategy.

    Second, normal examiners do not get reexams or interferences (they’re handled by reexam specialists and the BPAI, respectively), so at least those two are not among the things examiners will avoid working on.

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  49. “That is, examiners getting away with simply avoiding working on “submarine” (long pending, plural continuation) applications, reexaminations, reissues, interference requests, or other such important pending matters that might take more work. Getting away with putting such high priority applications aside and picking up much more recently filed simpler applications to work on that may be easier to get disposal credits for.”

    Learn2makecasessimpleifyouwantthemexaminedquickly?
    Some people make rocket science out of prosecution. Why?

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  50. Let’s hope President Obama appoints curious to run the PTO.

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  51. Maybe more credit should be given to examiners the first time they examine the case and less credit for each subsequent rce?

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  52. “Yes, but unfortunately this “parallel prosecution” has been consistently misused as an excuse for too many USPTO examiners being de facto allowed by PTO management to examine applications completely out of original filing date order and/or out of public priority order. That is, examiners getting away with simply avoiding working on “submarine” (long pending, plural continuation) applications, reexaminations, reissues, interference requests, or other such important pending matters that might take more work. Getting away with putting such high priority applications aside and picking up much more recently filed simpler applications to work on that may be easier to get disposal credits for. This continued lack of effective PTO management docket control has had very costly negative public consequences on patent enforcement and patent litigation.”

    Ye@h, but they’re doing record breaking quantity at record breaking quality!!!!!!!!!!! Ye@h, baby!!!!!!!!!! (sarcasm off)

    This is precisely why comments and papers from academics are useless. They simply don’t understand how examiners are rated and what their incentives are. Getting as much credit for “examining” a case the third, fourth, fifth, etc. time you’ve “examined” it as you got the first time you “examined” it makes no sense. Well, it makes no sense to any rational person, but we ain’t talking about rational people, we’re talking about the PTO.

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  53. Yes, but unfortunately this “parallel prosecution” has been consistently misused as an excuse for too many USPTO examiners being de facto allowed by PTO management to examine applications completely out of original filing date order and/or out of public priority order. That is, examiners getting away with simply avoiding working on “submarine” (long pending, plural continuation) applications, reexaminations, reissues, interference requests, or other such important pending matters that might take more work. Getting away with putting such high priority applications aside and picking up much more recently filed simpler applications to work on that may be easier to get disposal credits for. This continued lack of effective PTO management docket control has had very costly negative public consequences on patent enforcement and patent litigation.

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  54. “The big benefit for the examiner is that closely related applications mean less time spent understanding the background and possiby less time searching for prior art. The search corresponding to the first application can possibly produce prior art that can be applied to the related case using secondary references.”

    And the RCE counts generated from all of the related applications are like exponentially gravy!!!!!!!!!!!!

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  55. Make absolutely sure you cross-IDS & cross-cite everything. I know, it’s a no-brainer, but when different firms file the patent it can be difficult to make sure this happens.

    Reply
  56. When an examiner is working on a single case and determines there is a closely related application, it is possible to request to transfer the related application to your docket. Usually the request is granted assuming the related application hasn’t been worked on by another examiner. I’ve made that request when working on a few applications.

    It’s also possible to transfer an application to another examiner who has already worked on a closely related application (assuming they accept the transfer). The assumption being the other examiner is already familiar with the background of both inventions. Either way, it’s an allowed practice that closely related applications can be transferred to one examiner if the similarities are noticed.

    Other than that, double patenting rejections are the most common worry about closely related applications. All other procedures and counts are normal.

    The big benefit for the examiner is that closely related applications mean less time spent understanding the background and possiby less time searching for prior art. The search corresponding to the first application can possibly produce prior art that can be applied to the related case using secondary references.

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