I have compiled some data on the timing of initial non-final office action and the ensuing response for 400,000+ patents with patent numbers ranging from 5,800,000 – 7,100,000. The graphs below show that office action responses are strongly deadline driven. About 60% of responses are filed by the initial three month deadline. However, 2/3 of those early responses are filed within only a couple days of the three month deadline. Similar “rushes” are seen to meet the four, five, and finally the six month date.
PTO Fees are the explanation for the deadline push. Missing the initial three month deadline requires payment of a $120 fee – not a steep fine – but something that some clients are now refusing to pay. Subsequent monthly surcharges rise more dramatically: first $460 then $1050. For clients on more of a fixed prosecution budget, attorneys would rather money go toward their fees rather than to the PTO. Of course, the six month date has the significant legal ramification of abandonment.
The immediacy of the deadlines hides an important fact in today’s prosecution: Each day of by the practitioner results in one less day that the patent is in force. The fact that very few responses come quickly (apart from the deadline) indicates a latent demand for delayed prosecution — It seems that most clients do not care whether the patent issues now or six-months from now. Why not eliminate these deadlines or push them back considerably? Applicants with important or easily patentable inventions would continue to respond quickly. Those who could care less or who need time to build a patenability case could wait.
Now, there are several reasons to strive for compact prosecution timing. Perhaps most importantly is the notion that both the applicant and examiner will work better and more efficiently if they have seen the case recently. The tradeoff, however, is that applications sit much longer awaiting initial consideration.
A note about the data below: Responses that appear below to be just after a three, four, five, or six month deadline are typically ‘on time.’ My measurement is from the date the OA is entered in PAIR to the date the response is entered in PAIR (not the mailing dates). This typically adds an extra week or so.
Notes:
- Jeff Steck, a patent attorney at MBHB LLP, examined the small ‘ripple’ in the histogram and explains that it can be explained by the fact that (most) OA’s are sent out on weekdays and responses are received on weekdays. This ‘weekend effect’ causes the ripple overlay. My original postulation that the ripple is caused by the PTO’s bi-weekly counts is not sufficient since the ripple clearly has a one-week wavelength.
“Doctrine of prosecution laches…keeps them from being enforceable.” writes Mr Bloom.
That’s fixed it then. Perhaps more legal certainty in the USA than in Europe, ‘cos in Europe we don’t do prosecution laches. Except that Europe is a bit tougher on what post-filing amandments introduce new subject matter. Here, an undisclosed intermediate generalisation is new matter. More than one way to skin a cat, as ever.
“You must have misspoken here.”
I certainly did. Obviously I meant “narrower.” So much for reducing Max’s confusion…
“If filed more than two years after issue of the original application, then the reissue claims must be broader than the previously issued claims.”
You must have misspoken here.
35 USC 251 reads in relevant part:
“No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.”
“I had heard of the concept of the broadening continuation (within 2 years after issue) and had supposed it meant broader than the originally filed claims (as opposed to the claims that issued).”
Max, I think you’re confusing continuations with reissues. For the former, there’s no 2 year restriction and no restriction on the claims other than that they must be supported by the specification. However, a continuation must be filed while a previous application is still pending (like European divisionals).
Reissue applications must be based on an “error” during prosecution, but don’t need to be filed during pendency of a previous application. If filed more than two years after issue of the original application, then the reissue claims must be broader than the previously issued claims.
With regards to certainty, if there’s a pending continuation, then any disclosed subject matter is fair game. If not, then claims can only get narrower. This is why some applicants keep at least one continuation pending for a long time after issuance of the original patent. Lemley has complained about this issue, but for now nothing prevents broader claims from popping up later. However, the doctrine of prosecution laches might keep them from being enforceable.
“Leopold, if I received a 154(d) notice letter, I might begin monitoring the application, but would ignore any demands to stop until I saw a patent issue. Provisional rights are worth nothing until actual claims issue.”
That’s fine, but you’re potentially liable for willfulness from the date of issue.
“I wonder if such a letter would be sufficient for a DJ action once the patent did issue.”
After Medimmune, I would bet on it, if the issued claims are at all similar to the published ones.
–the few articles I’ve read on this subject seem to be unanimous in suggesting that the required notice must be a bit more specific, identifying the specific “infringing” acts, and should also include a demand to stop. —
Posted by: Leopold Bloom | Sep 04, 2008 at 09:48 AM
Leopold, if I received a 154(d) notice letter, I might begin monitoring the application, but would ignore any demands to stop until I saw a patent issue. Provisional rights are worth nothing until actual claims issue. I wonder if such a letter would be sufficient for a DJ action once the patent did issue.
I don’t do a lot of litigation, either, but the 154(d) issue is something we examine during damages.
Incomplete: please excuse my ignorance of US patent law (I’m here to learn). I had heard of the concept of the broadening continuation (within 2 years after issue) and had supposed it meant broader than the originally filed claims (as opposed to the claims that issued). My issue is with legal certainty. Does the public have it, in the USA, whenever claim 1 of the parent is unfeasibly wide and, throughout the 20 years after that hopelessly wide claim is filed, there is the threat of issue of wider claims. You appear to me to think such legal uncertainty is a price worth paying, for the goal of securing for every inventor unlimited bites at the cherry. I’m not yet sure that I agree with you.
“With all due respect to the work load in-house counsel and in-house inventors are required to attend to, especially in these “right-sized” days, my experience has been most prosecution delays are caused by delay in receiving direction from in-house, not at the outside counsel who is doing the actual prosecution. I have wasted countless hours of non-billable time asking, and re-asking, and asking again for direction – each time explaining, re-explaining, and explaining again what the situation is and what the options are. One of the main reasons I went in-house.”
As one who has recently made the jump the other way, let me clue you (and others on this board) in about in-house prosecution. In-house inventors in a large company are not just sitting on their hands, waiting for OAs from the PTO. In my former company, the staffing was so tight that those who were supposed to be inventing were also solving engineering problems in the production facilities and doing marketing to some extent. Believe it or not, IP is really the last thing that these “inventors” are tasked with, and in accordance with the “triage” technique, the last thing they deal with. Sometimes, keeping the commercial, money-making part of the business functioning is more important than prosecuting IP that may never pan out…
“…the actual notice part will of course be easier to prove; just send a copy of the publication to the infringer.”
you might want to be careful with that – the few articles I’ve read on this subject seem to be unanimous in suggesting that the required notice must be a bit more specific, identifying the specific “infringing” acts, and should also include a demand to stop.
I think 154(d) is an interesting provision. I’ve seen lots of 154(d) notice letters, some of which may have been legally effective, but I’ve never seen even a formal complaint for damages under 154(d), much less a successful complaint. That’s not saying much, because I’m not involved in much litigation, but still. That raises the question whether 154(d) is effective for anything other than intimidating competitors.
— if B is the first inventor of a new solution which is outside the scope of what A claimed–
Posted by: MaxDrei | Sep 03, 2008 at 09:07 AM
Max,
Your original question was directed towards “broadening continuations” and whether it skewed towards inventors rather than investors.
In my limited experience, what usually happens is the applicant files a parent application with claims. The independent claims are rejected, but dependent claims are allowed. The applicant allows the dependent claims to issue, then files a continuation application to try and get the independent claims allowed. This is what I am considering a “broadening continuation”, in the sense that the applicant is trying to get claims allowed in the continuation that were not allowed in the parent.
Yes, the continuation application favors the applicant-inventor over the investor B who might want to build a device in the gap between the independent non-allowed claims and the allowed dependent claims. So in that sense, I see inventor B as a copyist. If those independent claims do get allowed, I see no injustice in allowing the applicant-inventor to reap the extra reward.
In your new scenario, since inventor B invented something outside the scope of what A claimed, I would give inventor B the patent.
What did you originally mean by “broadening continuation”?
Posted by: Leopold Bloom | Sep 03, 2008 at 08:56 AM
Leopold, I don’t profess to be an expert on 154(d) either. I did not intend to imply that I thought “substantially identical” simply meant “within the scope”. However, given that (1) each independent and dependent claim in a patent application has a different scope; (2) there is no limit on the number of claims that can be placed in an application; and (3) the possibility of a preliminary amendment post-filing but pre-publication to add / change claims, I suspect that it may not be difficult to show that the infringer is “substantially identical” to at least one of the claims in the patent publication. This will of course be a heavily fact-based determination.
Also, if the applicant knows about the infringer, the actual notice part will of course be easier to prove; just send a copy of the publication to the infringer.
On review, I think I may have made some unwarranted assumptions. Well, that’s what blogging is for.
patent.drafter — sounds like the PTO needs to hire, train and retain additional “computer method” examiners
(and also update search tools and databases and classifications to help them with their searches)
Recently had reason to review a half-dozen computer method applications published between 2003 – 2006.
Two granted patents (issued 2005 and 2007) on applications filed in 2002. One first office action on an application published in 2006. Three “New Case Docketed for Examination” on applications published 2004-2006.
Sorry Incomplete. I don’t understand your point. Is your party B a copyist, or an independent inventor of some invention similar but not identical to A’s? Doesn’t every jurisdiction have a patent law that discourages investment in copying and encourages investment in those (A) who are first to bring to the public something that is new and inventive technology? In your scenario, if B is the first inventor of a new solution which is outside the scope of what A claimed, has she not enriched technology? Why then should the 20 year reward for bringing that enrichment to the market fall into A’s bank account, and not into B’s?
“As to ‘substantially identical’ regarding the second element, though, I suspect this element is always met. Generally, during prosecution all claims got narrowed (rather than broadened) so that the issued claim on which infringement has been found (otherwise this section doesn’t apply at all) is definitely covered by the scope of the claims in the application.”
incomplete, I’m no expert on 154(d), but this can’t be the way it works, i.e., liability accrues provided only that the ultimately claims are narrower than the published claims. If it is, then the obvious strategy is simply to claim “a method” and “an apparatus,” and then amend away after publication. The legislative history for 154(d) indicates that “substantially identical” is supposed to mean the same thing as the courts have developed “identical” to mean with respect to intervening rights related to re-exam and re-issue. Case law suggests that “identical” in this context doesn’t mean “exactly identical,” but I don’t think it supports the notion that “substantially identical” simply means “within the scope”.
So, I suspect that this limitation on 154(d) is only occasionally met. And I’m not aware of anyone successfully collecting under 154(d), but I haven’t looked it up. Anyone else?
Incomplete — doesn’t 154(d) require:
Posted by: curious | Sep 02, 2008 at 03:40 PM
curious, you know the answer is yes. I did qualify my statement with the conditional term “may.” As to “substantially identical” regarding the second element, though, I suspect this element is always met.
Generally, during prosecution all claims got narrowed (rather than broadened) so that the issued claim on which infringement has been found (otherwise this section doesn’t apply at all) is definitely covered by the scope of the claims in the application.
————————–
But how to explain the unique to the USA “broadening continuation”? A skew to favour inventors over investors? Does that make sense any more?
Posted by: MaxDrei | Sep 03, 2008 at 06:52 AM
Max, you make the wrong distinction, I think. It is not a question of favoring inventors over investors, it is a question of which inventor (A or B) should be favored by the investor.
If the inventor B and the investor are the same entity, i.e. a competitor wishing to make a similar product, of course they would prefer to invest in themselves rather than in inventor A. The patent law in the US has made the opposite choice and said that one should invest in inventor A.
Smash, some jurisdictions traditionally expect patent attorneys to do a thorough and competent drafting job. In these jurisdictions, if you don’t describe your contribution to the art on your Patent Office filingt date, you can’t make good the incompetence later. Other jurisdictions (I include Germany) take the view that this is to set an unfairly high level of competence. Fairness to the inventor therefore requires enough prosecution amendment laxity to recover the position after the filing date. This philosophy reaches its zenith in the concept of the US post-issue “broadening continuation” which the ROW thinks to be outrageous, perhaps because outside the USA the honourable profession of “patent attorney” is one that stands alongside the “attorney at law” profession. Correct me if I’m wrong but the zenith of skill in patent law is claim drafting. It is the core skill to be examined in those countries which have a patent attorney profession. In case you ask, German patent law traditionally features “central” claims, not the peripheral “ring fence around the protected area” that we are familiar with. Think of a German central claim as a “Keep Off the Grass” sign in the middle of the protected area, and reciting the features of the “Best Mode”.That will explain why German litigators, even today, think that German patent attorneys can’t write decent claims. But how to explain the unique to the USA “broadening continuation”? A skew to favour inventors over investors? Does that make sense any more?
“Suppose I have made a minor, inevitable, advance and I have no intention to actually go out and invest money in bringing it to the market, then I have no incentive to push my patent through quickly unless I am facing a short deadline.”
big hairy rat–
With all due respect (I’m a newcomer and I’m open to persuasion), why wouldn’t/shouldn’t this hypothetical “minor, inevitable, advance” be obvious under Section 103?
“In the absence of short deadlines, my best strategy would be to spend as little money as possible and wait and see if someone else has the idea and incorporates it into a successful product. If someone else proves the idea is valuable or sinks big money into it then I can perfect my patent later and extract some Dane Geld from the guy who actually brought it to market. I get to capture the economic value of the other guy’s successful market research and product research and development without putting my own capital at risk.”
This reminds me of a thread a few weeks back where a law professor argued that continuation practice unfairly permitted an applicant to move the fences in midstream, as it were, and capture a competitor’s product. So my question is, why does or should the patent law permit (indeed, encourage) this seemingly unfair and economically inefficient rent extraction?
Leopold, Me, you contend that there is no more legal certainty than in the USA, during the 20 year term in Europe. What if I were to assert that EPO strictness on admissibility of prosecution amendments is so great that Europe can allow an EPO Applicant as long a cascade of divisionals as Applicant wants to file, yet still provide that an authoritative clearance opinion can be written on the basis of the original WO publication, 18 months after the declared priority date at the USPTO. Clearly, Applicant’s business competitors need to make investment decisions at the beginning of the 20 year term, rather than waiting till the end, and society has an interest in facilitating accurate investment decision-making.
With regard to deadlines, there is such a thing as being too quick to respond. There is something fundamentally irresponsible about filing a response without taking at least some amount of time to determine if there is any input from the inventor or client.
As for prosecution laches it requres “unreasonable and unexplained delay in prosecution, even though the applicant complied with pertinent statutes and rules.” And also requires an intervening adverse right. It is an underdeveloped and deeply murky doctrine at best.
Elfin — you make some good points.
“Do you think that a case for proseuction laches could be made for a patentee who *regularly* responds at the six-month mark?”
No. Go fish.
Sure, it’s within the statutory period — but continuations and CIPs are allowed by statute, too. The whole point for the _equitable_ doctrine is to prevent abuses of what the statute permits. Otherwise, if prosecution laches was limited to activities outside the statute, it would be a matter of law. Right?
“Do you think that a case for proseuction laches could be made for a patentee who *regularly* responds at the six-month mark? ”
I don’t — you are responding within the statutory period
Two comments:
1) Each day of delay after the three-month mark actually can take *two* days of life off the patent term — one for pushing back the issue date, and one for any PTE that would otherwise have been available.
2) Do you think that a case for proseuction laches could be made for a patentee who *regularly* responds at the six-month mark? I have seen pre-GATT (and post-GATT) applications with lengthy prosecutions where the extensions sometimes created over *two years* of extra delay (e.g., eight responses with the extra 3 months each). If this behavior continued across a portfolio of patents, should Symbol-type reasoning kick in to qualify this as unreasonable delay? Is anyone aware of this argument being made?
-EM
Beautiful work, Dennis. Unfortunately, the likelihood of the PTO extending deadlines of its own volition is nearly zero because these are a huge source of fee income.
“Does the royalty make up the majority of the damage award in litigated cases, though? I don’t pay enough attention to know the answer.”
Are there any cases in which someone successfully obtained the publication royalties?
Incomplete — doesn’t 154(d) require:
“actual notice of the published patent application” and “invention as claimed in the patent is substantially identical to the invention as claimed in the published patent application.”
—The immediacy of the deadlines hides an important fact in today’s prosecution: Each day of by the practitioner results in one less day that the patent is in force. —
Note that 35 USC 154(d) allows you to collect a reasonable royalty from the date your application publishes. In other words, you may be able to collect some damages when you’ve filed, w/o regard to timeliness in prosecution. Does the royalty make up the majority of the damage award in litigated cases, though? I don’t pay enough attention to know the answer.
“But I mean a client saying “respond, but wait until 4.9 months,” or the like.”
Only if the client is short on money.
“I’ve had clients say to wait until the inventor can review the proposed response and the prior art and that if that requires an extension of time, that’s ok.”
Sure, me too. But I mean a client saying “respond, but wait until 4.9 months,” or the like.
“Is anyone aware of a client that is actually requesting that the prosecuting attorney delay a response? I’ve never encountered one.”
I’ve had clients say to wait until the inventor can review the proposed response and the prior art and that if that requires an extension of time, that’s ok.
“The fact that very few responses come quickly (apart from the deadline) indicates a latent demand for delayed prosecution — It seems that most clients do not care whether the patent issues now or six-months from now.”
I disagree as well, but for slightly different reasons. As pointed out above, responding within a couple of weeks is often completely impractical, so the dearth of quick responses is easily explained by other factors. On the other hand, if there were truly a significant “latent demand for delayed prosecution” then I would expect MORE responses to be delayed until after the 3-month deadline. For a very small fee (compared to the initial prep and filing costs), prosecution can be further delayed by up to 3 additional months per office action. To draw any conclusions about the applicant’s motivations we would have to determine the reasons behind the blips at the 5 and 6 month deadline. Flirting with the latter deadline seems a bit risky for an intentional strategy.
At best the data above shows that many applicants are indifferent to delays. I suspect that many applicants are actually relatively unaware of the actual delays.
Is anyone aware of a client that is actually requesting that the prosecuting attorney delay a response? I’ve never encountered one.
“The USA is the ONLY country in the world that has CIP’s and CON’s. BTW, American inventors … are pretty good at keeping something pending during the entire 20 yrs … at the EPO … with an endless cascade of divisional upon divisional applications.”
Max, would you care to explain the practical difference between a US “CON” and the EPO divisional? I don’t think those differences are very significant. Further, CIPs are currently over-used, in my opinion, and not very effective in most cases. So, I don’t think the alleged gulf between USA and ROW is very wide in this area.
Accordingly, I’m with Me. Until there are no pending cases claiming priority to the parent, there is no certainty in either the US or Europe.
“Missing the initial three month deadline requires payment of a $120 fee – not a steep fine – but something that some clients are now refusing to pay.”
If the delay in filing is due to the client, then the client owes the money. If the delay in filing is due to the law firm, then the law firm owes the money.
If the delay in filing is due to the law firm and the lawfirm is charging the client the three month deadline payment, they may want to review the patent bar and their state bar etical duties.
Me might agree, she tells us, but for the fact that the patent law of the USA includes CIP’s and CON’s. The USA is the ONLY country in the world that has CIP’s and CON’s. Given the tendency for the world in ten years’ time to do what the US is doing today, I find it significant that nobody else wants its CIP’s and CON’s (or, come to think of it, its First to Invent). Come to think of it, maybe inside the USA it’s only the parasitical lawyers who still want CIP’s and CON’s. What do readers say? BTW, American inventors (and their outside counsel even more) are pretty good at keeping something pending during the entire 20 yrs, also at the EPO, as a reservoir from which to draw new claims. They do it with an endless cascade of divisional upon divisional applications. Aren’t divisionals all you need?
“The fact that very few responses come quickly (apart from the deadline) indicates a latent demand for delayed prosecution — It seems that most clients do not care whether the patent issues now or six-months from now.”
I disagree. Prosecution decisions are subservient to business decisions. Prosecution doesn’t occur in a vacuum. A lot of decisions have to be made before the response can, or should, be prepared.
Inquiring Mind is also correct. Attorneys that handle a large number of files have to prioritize. Deadlines are simply a means to that end.
Dennis, do the graphs include responses in the form of notices of appeal? What about notices of errors under MPEP 710.06.
It surprises me that there is no 1-month blip. If the OA contains a goof (ha, ha, ha, like which ones don’t) under 710.06 if you bring the error to the attention of the examiner w/in 1 month the clock is re-set.
I find examiners very often ignore at least one dependent claim, which triggers 710.06. I file my grounds of traverse, amendments, and a notice of error pursuant to 710.06 within 1 month and demand the error be corrected and the clock be re-set. Basically, I respond to all of the rejections I can, and for the ones with errors I evoke 710.06 and say “Do it right and give me another non-final OA.”
If the next OA doesn’t improve, more and more I file a notice of appeal, even if it’s non-final. I find that with some examiners, and you can generally tell by the 2nd OA, it’s a waste of time to beg them to do what they’re getting paid to do. An appeal brief ends up being cheaper in the long run and you’ll probably have to file one anyway. I see the 710.06 notice as a shot across the examiner’s bow.
I wonder whether anyone else relies on 710.06 on a regular basis, especially combining the notice with the amendments. According to the data, apparently not.
Maxdrei-
I might agree if it the U.S. did not allow CIPs and CONs. There is no certainty, companies keep valuable patents in prosecution for the entire term (this could also be a reason for many of those 6 month responses, it is a strategy to delay prosecution).
So, we see that the existence of a measly USD 120.00 fee, which nobody need get all excited about, the PTO gets back a full 50% of all responses within a predictable and very short time window, 3 months after an Office Action issues. See, with a bit of imagination, the PTO can manage its workflow quite effectively.
What’s wrong with deferred examination? Not much for those who file and prosecute, I agree. But quite a lot, for anybody who wants clearance. In a properly functioning patent system, companies should be 1) monitoring the PTO output of A publications, to avoid investing in new technologies that their competitors have already filed on. But will those filings mature into claims that are valid and infringed? The longer they pend, the longer the uncertainty. The greater the uncertainty, the greater the deterrence to investors in new technology. You may say that the level of legal uncertainty is a given, and the same with or without deferred examination. Based on the EPO experience, where we know what post-filing claim amendments are admissible and which are not, I disagree.
I guess my experience differs from that of others posting here, but I respectfully disagree with the implication that attorneys choose to procrastinate in filing responses. Both now when I am in-house and previously when I worked at a firm, I have usually had so many cases to handle that triage is necessary–meaning that the cases with the most urgent deadlines get handled first. So it’s probably good that there is a six-month non-extendable deadline, or some cases would never move along at all. I would also be in favor of deferred examination prior to first action, because I think there are a number of cases that might end up not getting prosecuted at all if deferred examination was available until the end of the term–maybe it would even have an actual impact on the backlog.
Thanks cc.
“It seems that most clients could care less whether the patent issues now or six-months from now.”
The reason for this makes perfect sense. Protection might be better once inventors have time to do experiments, prepare decs, etc. Also, waiting allows one to see what is the exact commercial embodiment before claims issue, and allows better protection. It is also true that the Office sometimes dig in their heels on good and bad arguments placing the practitioner in a place where looking at the rejection three of four times is required to try and find the best angle of attack to overcome, or educate, the Examiner.
Paul F. Morgan stated:
“This regular and extensive patent issuance delay by applicants may well also demonstrate the hypocrisy of the many U.S. companies that have strongly opposed a U.S. “deferred examination” system, as you are more tactfully suggesting. ”
I agree. But I would note most of the resistance I have seen to deferred exam is not the companies, but the law firms as the firms are the ones who will suffer.
Delayed examination is the perfect solution for companies, the office and the bar. The only people it hurts are the well paid outside law firms who don’t get to prosecute patents that will have no commercial value. What is the problem? Often a patent ap must be filed early in the research cycle to protect FTO on the invention, and currently it must be prosecuted as long as there is any chance the invention will have commercial value. The delayed exam system would allow folks to only prosecute those patent that are likely to have commercial value, and ease the strain on the office and save companies mucho dollars.
What is the world in wrong with that?
“It seems that most clients could care less whether the patent issues now or six-months from now.”
–couldn’t care less–
“With all due respect to the work load in-house counsel and in-house inventors are required to attend to, especially in these “right-sized” days, my experience has been most prosecution delays are caused by delay in receiving direction from in-house, not at the outside counsel who is doing the actual prosecution. I have wasted countless hours of non-billable time asking, and re-asking, and asking again for direction – each time explaining, re-explaining, and explaining again what the situation is and what the options are. One of the main reasons I went in-house.”
Amen! Every single time I have gone over a 2month deadline (for responding to a final) or a 3month (for a non-final) has been due to in-house counsel not giving me the go-ahead to file my response. The sooner I can file a response, the sooner I can bill for the response, the sooner I can collect on that bill. I’d respond to every action the day it came in if it were up to me.
The delays can be very valuable to small entities who are in difficult cash flow positions. They certainly want their patents to issue as quickly as possible, but they also need the extra time to raise money.
No surprise here – people will tend to use the amount of time allotted to them to get things done. Think of it as a variation on the 2nd law of thermodynamics.
Patents work all over the world is deadlines driven. It is impossible to imagine patents work without deadlines. It adds punch to the already “sizzling hot” patents work!
” Every day of the initial three month period is often only just enough time for outside counsel to receive the action, report it to a foreign intermediary, the foreign intermediary to report it to the applicant, for the applicant and its inventors to review it in-house and for the instructions to make the return trip.”
Nobody told them about email? They don’t have to send everything by boat/foot.
And yes, I always thought the 6 mo was rather generous of congress. I mean, either you have business with us or you don’t. Having 6 different examiners on a long case isn’t going to help prosecution very much.
Paul Morgan wrote:
“Prosecution delays which allow the contents of the specification and claims to become “stale” to the examiner”
He is ABSOLUTELY right, and the applicant should pay. But WHY WHY WHY WHY does the USPTO administration get to “pocket” all of that without “crediting” the Examiner for his extra effort reading the ‘stale’ reply – THIEVERY of the Examiner’s valuable time. I am SHOCKED that the Examiner’s union has not taken this issue up.
PS – I am NOT, and never WAS a patent Examiner – I have even had many frustrating experience with “jerk” Examiners – however, FAIR IS FAIR
Mr. Karp has hit the nail squarely. The breakdown between domestic and foreign based applicants would be interesting. Every day of the initial three month period is often only just enough time for outside counsel to receive the action, report it to a foreign intermediary, the foreign intermediary to report it to the applicant, for the applicant and its inventors to review it in-house and for the instructions to make the return trip.
And I don’t like the idea of outside counsel being pressured to respond because of the purely speculative reasoning that “Each day [off] by the practitioner results in one less day that the patent is in force.”
The fact is, as many have pointed out, filing time and initial prosecution time are uncertain times against which, some amount of careful delay (like a few three month *statutory* periods) is welcome. Besides there is no actual reduction in term working against the applicant if the three month deadlines are diligently met.
A harried patent attorney (or for that matter a harried PTO) does no one any service.
It might be really interesting to break the delay statistics down between areas and between large and small entities. The attitude to delay may provide insight into how the patent system is actually being used by different groups.
If large entities with large patent portfolios are indifferent to delay then we might reasonably conclude that the patents are defensive.
If a small non producing entity is indifferent to delay then it is pretty clear that they are not hoping to raise venture capital on the strength of the patent or license the patent to others for new product development.
With all due respect to the work load in-house counsel and in-house inventors are required to attend to, especially in these “right-sized” days, my experience has been most prosecution delays are caused by delay in receiving direction from in-house, not at the outside counsel who is doing the actual prosecution. I have wasted countless hours of non-billable time asking, and re-asking, and asking again for direction – each time explaining, re-explaining, and explaining again what the situation is and what the options are. One of the main reasons I went in-house.
MHO, YMMV, etc.
Extending the time frames is a bad idea.
Suppose I have made a minor, inevitable, advance and I have no intention to actually go out and invest money in bringing it to the market, then I have no incentive to push my patent through quickly unless I am facing a short deadline.
In the absence of short deadlines, my best strategy would be to spend as little money as possible and wait and see if someone else has the idea and incorporates it into a successful product. If someone else proves the idea is valuable or sinks big money into it then I can perfect my patent later and extract some Dane Geld from the guy who actually brought it to market. I get to capture the economic value of the other guy’s successful market research and product research and development without putting my own capital at risk.
Dennis writes
“It seems that most clients could care less whether the patent issues now or six-months from now.”
And in a rational world that probably means that most “inventors” have no intention of licensing the technology to others in up front licensing for new product development but instead are pursuing the strategy I propose (call it the “spider trap strategy”) of sitting and waiting for a victim to stumble unawares onto your patent.
P.S. Prosecution delays which allow the contents of the specification and claims to become “stale” to the examiner, or require a subsequently-assigned examiner to inefficiently pick up the case “cold,” is one of the reasons why the PTO’s attempted rule change [in litigation] to allow only one [non-delaying] RCE, but allow two [extensively delaying AND far more paperwork] old-fashioned continuations, is so incredibly inefficient and illogical for the PTO itself.
Dennis, yes, these statistics you have generated clearly demonstrate widespread patent attorney procrastination in taking a full three months to respond to PTO office actions [and quite a number taking even longer]. This regular and extensive patent issuance delay by applicants may well also demonstrate the hypocrisy of the many U.S. companies that have strongly opposed a U.S. “deferred examination” system, as you are more tactfully suggesting.
However, the most efficient time to defer examination in a deferred examination system is before, not after, a PTO office action. First, to avoid the searching, examination and office action preparation time and costs of all the applications that may be abandoned while deferred [due to prior art uncovered in foreign equivalent applications. product obsolescence, etc]. But also to avoid the contents of the specification and claims becoming completely “stale” to the examiner and attorney. Or, requiring a subsequently-assigned examiner and/or attorney to inefficiently pick up the case “cold.”
“Why not eliminate these deadlines or push them back considerably?” The deadlines do serve a disciplining function for both the patent attorney and the inventor to ensure that a good response is filed. Given human nature to procrastinate, the alternative might be a rushed response at the end of the six month statutory term, with no possibility of a future time extension. The deadlines also encourage an earlier issuance of the patents. And isn’t the early notice function of the claim scope an important issue, Dennis?
Comments are closed.