Patently-O Bits and Bytes No. 49

  • On June 11, 2008, the PTO submitted its “Fiscal Year 2009 Revision of Request for Continued Examination, Eighteen-Month Publication, and Other Miscellaneous Cost-Recovery Patent Fees.” The particulars of this amended proposal have not been released. [LINK]
  • Copyrights may now be registered electronically ($35) [LINK]

9 thoughts on “Patently-O Bits and Bytes No. 49

  1. The comments regarding the backlog at the Board are interesting, because I, like LL, was just thinking that the turnaround at the Board seemed to be a lot faster than it was “in the old days.” My most recent decision was 11 months from brief to decision. And that case had a reply brief. From reply brief to decision was 6.5 months.

  2. Regarding the review of proposed regulations by the Office of Information and Regulatory Affairs, in addition to the proposed changes to certain fees mentioned above, during the same week the PTO also sent two other packages of regulations for review – the Final Rule on patent applications containing claims with alternative language (Markush claims) and a prerule proposal on changes on the representation of others before the PTO.

  3. Regarding time for appeals, if I remember correctly, a while back (5-10 years?) wasn’t it around a 3 year wait to get a decision? I know it had dropped a lot since then, but it sounds like it is going back up based on what you all say.

    Guess we are all destined to repeat the same things over & over again. Just like the 101 pendulum. One extreme and then the other.

    thanks,

    LL

  4. You can find the BPAI’s production report here:

    link to uspto.gov

    Based upon the numbers, they had 2500 cases pending in Oct 07 (their FY08 Oct), and apparently they’ve disposed of 2900 cases since then … which means, they’ve should have cleared everything out since Oct 07. However, I’ve got cases that were docketed many MONTHS before Oct. 07 that haven’t been handled.

    Right now, the backlog is 3300 cases, which at the current pace of about 375 cases/month means that the backlog is quite extensive right now.

  5. ^ Not surprising, considering the introduction of the bill essentially admits past wrongdoing.

  6. I guess the BPAI is taking Duffy’s charge seriously, particularly given the bill recently introduced to rectify the problem.

  7. “Examiners, you may have thought that your final rejection was so well done that the applicant was forced to narrow his claims. Rather, the applicant realized that an appeal was not really an option even though he would likely prevail.”

    So WTF do you do when the Examiner maintains the rejection even after the RCE??? Attorneys, you may have thought that your RCE was an easy way to bribe an allowance out of the Examiner. Rather, the Examiner realizes your arguments are still sh-t.

  8. The appeal process takes so long and is so backlogged that appeals are often not even an option, especially for products with short commercial lives. In other words, don’t fight that final rejection, narrow the claims and file an RCE. (Examiners, you may have thought that your final rejection was so well done that the applicant was forced to narrow his claims. Rather, the applicant realized that an appeal was not really an option even though he would likely prevail.)

  9. On a completely unrelated note – has anyone noticed the BPAI docket has come to a stanstill lately? I haven’t had anything move anywhere in the appeals process in about 5 months (and I have a fair number of evenly-distributed cases under appeal). Yay PTA, I guess.

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