PTO: First Office Action Expected Fall 2019.

The PTO has given the law firm of [REDACTED] an estimate that one of its recently filed application will be examined within fourteen (14) years of the filing date. (Unverified) image attached. As would be expected, this application falls within the business method technology center.

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21 thoughts on “PTO: First Office Action Expected Fall 2019.

  1. hello,
    i want to know as to how much time does the USPTO usually takes in giving the first action report for the patent applications filled in the us.

    reagards,
    juluri

  2. The First Action Prediction letter is not clear. I called the USPTO a few months ago and asked whether the First Action Prediction date was measured from the date of the letter or the filing date. I was told the filing date. I’m not sure if that is true.

    I have an April 2008 First Action Prediction letter from an application that says that the application will receive an Office action in approximately 21 months. I just obtained a May 2008 First Action Prediction letter for that same application that says that the application will receive an Office action in approximately 15 months. One month passes and the application gains 6 months in the queue? And if the estimated date was from the filing date, it shouldn’t change.

    Anyone have an answer to this delema. Thanks.

  3. Any solutions? The situation is quite alarming. Usually applications do not proceed further (in my experience for years altogether) beyond issuance of filing particulars. Let us come up with a strong proposal to solve this seemingly never ending pendency.

  4. One poster stated “hopefully the people that complain about the backlog are not the same people that complain about the PTO’s new continuation rules. you can complain about one or the other, but not both.”

    I was wondering why attorneys cannot complain about both. While continuations are adding to backlog, attorneys are paying for continuations. Continuations are not doled out for free by the agency. And assumedly the filing fees are couched on the concept of being processed in a somewhat timely fashion. I don’t understand why an attorney cannot complain about timeliness of service and the services offered by the agency at the same time. They are two separate, although linked, issues.

    If the PTO was able to hire and manage its workforce properly, possibly stemming the tide of attrition and retaining its employees, there is no reason that attorneys could not be satisfied on both counts.

    Furthermore, the problems confronting the agency did not just spring upon management yesterday or even last year. Rather the problems were ignored and dismissed like a snowball rolling downhill, until it reach such gigantic proportions that the avalanche buried the agency alive.

  5. For a similar, non-redacted response from the PTO, check PAIR for app 10/914,609. It’s an application of Suze Orman (CNBC) that was filed in summer 2004. According to the status response in August 2005, it was still estimated to be 6.5 years from a first office action. Same art unit.

    Unless the number of pending applications in this unit has doubled in the last year, I doubt the 14 year response here is accurate.

  6. “Similarly, in PCT work, the availability of a competent examiner to write up an IPER and fax it to you one week before statutory deadline for foreign filings makes the whole exercise virtually useless.”

    Or six months afterwards, which was my experience in a number of cases.

  7. Jackson –

    Don’t confuse the issue of competence of examiners with comments regarding availability of examiners. The availability of a competent examiner in 14 years may make the entire matter irrelevant to the inventor or assignee – so much so that in the absence of “self help” in the interim, there may be no need for the PTO to do anything unless available and useful “self help” steps are accomplished in the interim.

    Similarly, in PCT work, the availability of a competent examiner to write up an IPER and fax it to you one week before statutory deadline for foreign filings makes the whole exercise virtually useless. Unless you’ve taken “self help” steps to evaluate the true measure of patentability, you’re flying blind at that point.

    So, a little hyperbole to focus attention on the matter may be useful. If timely examination can’t be achieved, then there may well be no point in having a competent examiner available 14 years from now.

    From your comments, it seems like you would make a good #1 employee for a new Private Patent Examination Company.

  8. people who post comments on this blog are starting to confuse me. hopefully the people that complain about the backlog are not the same people that complain about the PTO’s new continuation rules. you can complain about one or the other, but not both.

    plus, i think the digs at examiners might be a bit unneccessary. as a former examiner turned attorney, i can tell you that–back when i was an examiner–i found myself (on the whole) to be more competent than the attorney’s I dealt with on a daily basis. i’m not implying that i was representative of all examiners, but there are some sharp folks at the office.

  9. This is no joke. I have pending patent apps for one client–both relating to business methods–and PAIR currently is forecasting examination in 14 years. These were filed a year ago.

    At the USPTO Town Hall Meeting in February, Commissioner Doll stated that the business methods art group is grossly understaffed. I am guessing these insane examination projections are more scare tactics than anything. As the USPTO continues to hire and train new examiners, the backlog will decrease.

  10. Wow –

    Reasonable royalty for 14 years. Then, then damages during the remaining term and a patent term extension that might be 14 years or more, once the patent issues and you can get to court. What a deal. Where can I sign up?

    Just keep doing “self-examination” and voluntary republication as necessary to keep those reasonable royalties coming, and sending notice letters to the infringers with copies of the republished Published Patent Applications. Sounds like a gold mine. Keep your fingers crossed that early infringers are still solvent when the patent finally actually issues and you can put the pinch on them.

    Maybe there’s a new business opportunity (new business method patent) here. Private patent examination, much like private arbitration. Bring me your tired, dusty applications, and we’ll dig up prior art and needle you about the informalities, and in response, you can correct claims and go for republication to shape up the case for the ultimate kill.

    You can send the prior art to the PTO with some sort of a “cert” that our “Private Examination” organization gives you, so they can forget about hiring searchers in Korea and just steal the money straightaway (like they’ve already started doing by tardy performance on PCT searches, Written Opinions, and IPERs). Instead, they can just sit on their thumbs and after coffee breaks every third day or so, or after hitting the snooze alarm while working in their home office, shake their head to get the blood flowing and email a few PDFs to a PTO clerk who can send out notices of allowance on those cases that they recognize have been scrubbed at first rate private patent examination organizations. (Maybe such organizations as have passed some sort of QA/QC inspection and have a “gold seal” by the PTO). Just one more step in the continuing struggle for patent practitioners (and cost increases to inventors) to as you are forced to do both your work and the PTO’s work.

  11. I checked an application I filed in April 2006 in Private Pair and the first action letter gave me a 172 month estimate. My application is also in Art Unit 3624.

    You can generate letters such as the one above by going into private PAIR, selecting the application and scrolling to the right until the “First Action Prediction” tab becomes visible and clicking the link on that screen.

  12. I checked an application I filed in April 2006 in Private Pair and the first action letter gave me a 172 month estimate. My application is also in Art Unit 3624.

    You can generate letters such as the one above by going into private PAIR, selecting the application and scrolling to the right until the “First Action Prediction” tab becomes visible and clicking the link on that screen.

  13. I put in a call yesterday to the relevant unit and left a message asking if this was a typo — meant to be, perhaps, 16.5 months. No response so far. Perhaps I will get a return in only five years.

  14. The notice says that the application is in Art Unit 3624, which is the Finance & Banking unit within E-Commerce, so yeah, it’s a business method.

    Don

  15. According to the legend at the bottom, this application is in Tech Center 3600, which does include the E-Commerce art unit.

    Don

  16. Yes, 3624 handles Class 705 cases generally involving financial services related applications.

    Let;s hope that this number popped out of some algorithm and doesn’t really reflect the PTO’s expectation.

    This effectively amounts to a denial of the constitutional right to a patent!

  17. I put in a call yesterday to the relevant unit and left a message asking if this was a typo — meant to be, perhaps, 16.5 months. No response so far. Perhaps I will get a return in only five years.

  18. Was this application filed fairly recently? I have noticed that the first action predictor, available via private PAIR, gives ludicrous numbers like this example until the application actually is assigned to an Examiner’s docket. One example is an application that initially was predicted to get a first action in 9 years. A few weeks later, that was changed to about 4 years – a rather small comfort.

    If this is not the case for this particular application, I agree – this is ridiculous.

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