USPTO Begins Examining Applications Once Again

On October 11, 2007, the PTO issued a MEMO instructing examiners to stop examination on pending applications that exceed the new 5/25 claim rule.  Eight days later, on October 19, 2007, the PTO issued a new memo ordering examiners to begin examining those applications once again. 

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33 thoughts on “USPTO Begins Examining Applications Once Again

  1. Budge – did the Office action set a 2-month deadline for compliance with new rules that started this month? We have received actions that have the 2month deadline less than 2 months from Nov.1

  2. The restriction Budge got was in violation of the PTO’s own policy. This was predicted. The Rules and transitional provisions are so complex and convoluted that Examiners will inevitably misconstrue them. The PTO will have its hands full administering the projected chaos. The PTO’s slide show states that 5/25 claim limits don’t apply to applications receiving a FAOM prior to Nov. 1.

  3. If commentator “Budge” received an RR with the 5/25 limitation, then again I ask, why can’t I file a “preemptive SRR” before 11-1, especially since the PTO is already applying the rules before the “effective date” of the new rules?

  4. Budge, I’m guessing that agencies have become so “dumbed down” that the people in charge are probably unaware of their duties, obligations, and authority under Administrative Law. They probably slept through that class, if they are even lawyers. Ms. Focarino does not appear to be a lawyer…

  5. Point noted LL, but this whole article IS ALL ABOUT the legalities. As anon examiner stated, as you stated, and as I agree with, no examiner in their right mind would pick up a 5/25 non compliant case unless they absolutely had to until the rule is settled. However, its unfathomable that such a letter would be circulated by an official during this type of controversial time.

    As Napolean Dynamite would say: “Idiots!”

  6. I believe I just received something akin to what “me” is referring to, but much more retroactive. specifically, I just received a Restriction Requirement, isssued in response to my response to a FOAM. My response had included about 50 new claims, in anticipation of the new rules, putting the total number at 70. The good news is that the RR was issued. But it also contained a notice that said my response could not leave the application under examination with more than 25 claims, unless I do blah blah. The statement when read plainly meant my Invention of my first claim set, which was examined, was included in the 5/25. That invention has 30 claims. So we have a case of an invention, examined already, being subjected to 5/25. What will screw me into the roof is if my response to the RR is greeted with a Final.
    Just on a grander note, I wonder if there has been been an agency that created such administrative bs in the history of this country? You read the rule package, the little nuggets they stick in there, between the 78 d(i)(i)” references, and you want to sklap someone. Now we have to play “guess what I meant” with them for a year.

  7. Your scenario and filing a preemptive SSR would not help, as they have no reason to accept it either. As for the effective date, the !ug 21 date did not implement this rule, did it? Only the CON rule was put in, and that was done to keep us from getting our rightful CONs filed. Is this already a taking? Was this Notice issue cited by KSR?

    Everything hinges on how the do RR after Nov. 1, and if they become much more agresive is it a taking as we filed apps with an aprticular expectation?

    The good news is, it will be hard for them to get much stricter than the unity of invention rules, or they will be defesting the whole “harmonization” goal they claim to have.

  8. My concern is the following: at 72 Fed Reg. 46728, columns 2-3, it states that

    “…The Office will provide an applicant who filed a nonprovisional application under 35 U.S.C. 111(a) before November 1, 2007, or a nonprovisional application that entered the national stage after compliance with 35 U.S.C. 371 before November 1, 2007, and who would be affected by the changes in the final rule, with an opportunity to submit:
    (1) An examination support document under 1.265;
    (2) a new set of claims such that the application contains five or fewer independent claims and twenty-five or fewer total claims; or
    (3) a suggested restriction requirement under 1.142(c).

    Specifically, the Office will issue a notice setting a two-month time period that is extendable under 1.136(a) or (b) within which the applicant must exercise one of these options in order to avoid abandonment of the application.

    The Office, however, MAY COMBINE SUCH A NOTICE with a requirement for restriction, in which case the applicant must make an election responsive to the restriction requirement and, IF THERE ARE MORE THAN five independent claims or more than twenty-five total claims drawn to the elected invention, the applicant MUST ALSO:
    (1) File an examination support document in compliance with 1.265; or

    (2) amend the application such that it contains five or fewer independent claims and twenty-five or fewer total claims drawn to the elected invention.

    Thus, if such a NOTICE IS COMBINED WITH A REQUIREMENT FOR RESTRICTION, the applicant DOES NOT HAVE THE OPTION OF REPLYING to such notice WITH a SUGGESTED RESTRICTION REQUIREMENT under 1.142(c). …”
    (Emphasis added. See, in particular, p. 46828, top of column 3).

    Thus, is it better to file your own “elected” sets of claims in a “preemptive SRR”(that would, no doubt, comply with the 5/25 rules) than take the chance that the Examiner will group more than 5/25 in the Examiner’s own Restriction ?

    And based on the fact that the PTO had been pulling the cases (…and doing what with them? writing Restrictions to accompany the Notice?),then can we preempt any “large number-of-claims PTO Restriction” by quickly filing our SRRs? ,,, and, could the SRRs be filed prior to the “effective” date of 11-1-07, especially since the rules seem to have been in effect since Aug 21st?

  9. “If the PTO notice (referred to in 37 CFR 1.75(b)(3)) is mailed on 11-1-07, does that preclude fiing an SRR?”

    I am not sure what you mean, won’t the Notice require you to file an SRR – with a two moth date (extendable to six, I think)?

  10. Has it occurred to the PTO that, by statute, patent applicants have paid “excess” claims fees for the examination of claims in excess of 3/20, presumably for compensating the PTO for the additional workload attendant these applications, and that the PTO “gladly” accepted these additional claims filing fees.

    Assuming that the PTO’s proposed rule changes actually take effect on November 1st – and that seems doubtful to someone who has carefully read the filings in the GSK v. PTO action – will the PTO be offering refunds of these additional claims fees paid to those who choose to reduce the pendency of claims in any application to no more than 5/25 in view of the rule change?

    A claim under the Federal Torts Claims Act could probably be maintained demanding appropriate refunds . . . Class certification, anyone?

  11. “It is not moot when there are hundreds of first office actions on the merits that will not be mailed before Nov. 1 due to this illegal 8 day delay in prosecution. The PTO will not take any action to correct the harm they have caused.”

    If GSK can prove they had such an app that would have been examined before 11/1 but for these 8 days, then you’re right. Otherwise, there’s no case or controversy.

  12. I agree that the legalities may be, and probably are, different. That’s why I starter off saying “I am not sure about the legalities of the memo & the flagging of cases that would have exceeded the 5/25 rule, so I won’t comment on it.” I was talking about reality and that effectively the 2 work out to be the same thing as to when the cases would be examined. That’s all. If there is any legal recourse, that is for you lawyers to decide.

    thanks,

    LL

  13. Can the rules be interpreted to mean that we can file SRRs in pending cases before the 11-1-07 date since the 5/25 rule is, in effect, retroactive to any pending application w/o a FAOM?
    If the PTO notice (referred to in 37 CFR 1.75(b)(3)) is mailed on 11-1-07, does that preclude fiing an SRR?
    What if the case has more than 25/75 claims? How can all the claims be prosecuted?

  14. LL what an Examiner “might” do and what a deputy commissioner in her official capacity ordered in writing to have done are two extremely different things, with vastly different legal effect. If you cant see that *you* are dreaming, or you must be Mooney under a similarly arcane penname.

    I agree CaveMan, but I wouldn’t hold my breath waiting on an OA for a pending app with more than 5/25 claims until this whole thing is resolved.

  15. LL what an Examiner “might” do and what a deputy commissioner in her official capacity ordered in writing to have done are two extremely different things, with vastly different legal effect. If you cant see that *you* are dreaming, or you must be Mooney under a similarly arcane penname.

  16. I am not sure about the legalities of the memo & the flagging of cases that would have exceeded the 5/25 rule, so I won’t comment on it. However, as I am sure that all of you that have worked at the office before (actually, probably all of you that have common human frailties & habits) know, cases are not always acted upon in a strict date order and people usually put off difficult things until it can not be avoided any longer. An examiner will often, like most people will, do the “easier” cases 1st and put off until later cases that will be “harder”.
    So, if you were an examiner and knew that a case on your docket will go from maybe 40-50+ claims down to 25 come Nov 1 (effectively), would you work on it a week or 2 before? NO! So, even without the office sending out any memo or flagging & pulling the cases, very, very few of the over 5/25 cases would have been worked on before 11/1. Anyone who thinks a lot of them would have been worked on, or think that they will now since Peggy sent out her memo, is dreaming.

    Thanks,

    LL

  17. “But if GSK’s standing was based on the Oct 11 memo, then the other edge of the sword says there is no standing after the second memo via mootness.”

    It is not moot when there are hundreds of first office actions on the merits that will not be mailed before Nov. 1 due to this illegal 8 day delay in prosecution. The PTO will not take any action to correct the harm they have caused.

  18. But if GSK’s standing was based on the Oct 11 memo, then the other edge of the sword says there is no standing after the second memo via mootness.

  19. Anon 3:26, I mention it more for the arbitrary and capricious aspect of the rules, but your point is valid. GSK has a very strong argument that it has standing to sue, even without this memo. Anyone disagree?

  20. pto rec’d on oct 10 and the first memo was issued on oct 11 … curious to see how & what contingencies were pre-planned …

    any word on the senate vote?

  21. As I mentioned previously, discovery in the GSK litigation should be very interesting – I suspect that the PTO is going to be very embarrassed to say the least. There are more bombshells about these rules that will come out soon enough.

  22. Interesting. GSK groupie, are you insinuating that the first memo by the PTO basically kills the PTO’s ability to argue that GSK doesn’t have standing since the rules have not gone into effect, when in fact they were in effect by the early implementation of pulling cases affected by 5/25?

  23. As I mentioned previously, discovery in the GSK litigation should be very interesting – I suspect that the PTO is going to be very embarrassed to say the least. There are more bombshells about these rules that will come out soon enough.

  24. What’s great is that there is an official memo that was issued and apparently rescinded by this memo? Any chance you can post the first memo?

    I wonder if the PTO disclosed this to GSK.

  25. Will someone please post a list of PTO high management individuals whose actions over the past 3 or 4 years deserves public notice and removal? There seems to be so many now that I can’t keep track!

  26. Let me be blunt . . . when is it that actions of a bureaucrat are sufficient counter to established law that they are in jeopardy of going to jail? Alternatively, are we to believe that bureaucrats have immunity and isolation of established laws to the extent of a praetorian guard?

  27. Is it possible that Ms. Focarino inadvertently completely stopped the examination of hundreds of patent applications in violation of the law?

  28. Way to go Focarino! I guess I should be surprised that the PTO would violate their own rules and procedures to scr&w as many applicants as possible. What? No 8-day extension of the November 1st effective date for applications that have not yet received a first action on the merits?

  29. With or without the memo, examiners ultimately have discretion on which cases to examine. Since they all know that November 1 means less work on a given affected application, there should only be a few applications this would actually impact.

  30. With or without the memo, examiners ultimately have discretion on which cases to examine. Since they all know that November 1 means less work on a given affected application, there should only be a few applications this would actually impact.

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