The next Patent-Term-Adjustment (PTA) challenge appears to be simmering.
The ordinary term of a patent is twenty-years from the original patent application filing date. The first several years of that term are generally worthless because they are spent prosecuting the application. The Patent Act provides for a patent term adjustment in cases where the patent prosecution process is unduly slow. With the current USPTO backlog, about 80% of issued patent receive some term adjustment. The average PTA for recently issued patents is just shy of two years. Thus, any discussion of the US twenty-year patent term must consider the real impact of PTA. In Wyeth v. Kappos, 591 F.3d 1364 (Fed. Cir. 2010), the Federal Circuit held that the USPTO had been substantially under-calculating the PTO due to patentees. That change boosted the average calculated PTA by about six-months.
Now, a new PTA challenge appears to be brewing in relation the dramatic increase in the number of appeals to the Board of Patent Appeals & Interferences (BPAI). There is typically a fairly long delay between (1) the point that a patent applicant files a notice of appeal and (2) the point that the appeal is docketed at the BPAI. That delay is due to a lengthy briefing and review period. The patent examiner maintains control over the case during that entire briefing period. It turns out that the majority of appeals never actually reach the BPAI. Rather, the most common occurrence is that at some point during the briefing-period the patent examiner withdraws the appealed rejection and subsequently either issues (1) a notice of allowance or else (2) a new rejection.
The brewing patent term adjustment issue involves how to account for the prosecution delay when a patent applicant appeals a rejection that is later withdrawn prior to a BPAI decision . The delay from notice-to-appeal to withdrawal-of-rejection is often around eight months.
PTA calculations are somewhat complex. 35 U.S.C. 154(b)(1) divides the "patent term guarantee" into three parts: (A) adjustments for delayed USPTO office responses; (B) adjustments for application pendency of more than three years; and (C) adjustments for delays due to appeals, interferences, and secrecy orders. Each Part considers aspects of appeals to the BPAI: Part (A) accounts for any USPTO delay that is more than four-months in responding to "an appeal taken under section 134" or to a decision by the BPAI where allowable claims remain; Part (B) states that the three-year pendency guarantee does not include "any time consumed by appellate review by the Board of Patent Appeals and Interferences or by a Federal court;" while Part (C) accounts for time in appellate review, but only if "the patent was issued under a decision in the review reversing an adverse determination of patentability."
In recent papers, the USPTO petitions office has rejected any PTA for the situation discussed above – where the applicant files a notice of appeal and appeal brief but then the examiner withdraws the rejection, so long as the withdrawal occurs within four-months of the appeal brief filing date. Running through the three-parts, the PTO argues that: Part (A) does not apply because the response to the appeal occurred within four months of the appeal brief. (37 U.S.C. §1.703 specifically interprets "appeal taken" to mean filing of the appeal brief rather than notice of appeal.) Part (B) does not apply because the USPTO interprets every day subsequent to the notice of appeal as being "consumed by appellate review." Finally, Part (C) does not apply because the board did not reach a decision.
Wrong Interpretation: The PTO's interpretation of the statute is not clearly right and is probably wrong because of the inconsistency in how the Office interprets the timing of BPAI review and because the current interpretation frustrates the "guarantees" provided in the statute. In particular, for Part (A) the USPTO states that an appeal is "taken" (and PTA counting-started) only after the applicant files the appeal brief while for Part (B) the USPTO states that time is being consumed by appellate review (and PTA counting-delayed) as soon as a notice of appeal is filed. The better interpretation is that "appellate review by the Board" for Part (B) does not begin until after the examiner answer. Certainly, until that point, the case-file remains under the examiner's control and not under review by the Board.
I shall remember that happiness day forever.
He said “Heh.” Heh Heh.
Ping, dear, you asked to be told when your posts begin to resemble NAL’s. It’s happening.
Heh.
Just because ya dont like the the observations and they don’t square with how you want things to be, don’t mean that that big Ol loophole aint really there.
ping, now you’ve gone and completely misjudged me. Amateurs get all distracted by what they want the law to be, or what their clients want the law to be. (Or employers – witness poor little 6’s incessant and pointless toeing of the line drawn by the Dudas regime.) I get paid to understand and apply the law as it is. Change it if you like – I’ll adapt.
M81,
Good luck with that.
As Iza mentioned – petitions be a whole nother can O’ worms.
You didn’t mention if your beef involves a Final or non-final rejection. I wouldn’t wantcha to go down the IMHO-Nedlaw blind alley now.
IO,
You merely suggest a change in the law without any support. The “reasonable period of time” has already been determined (by law, all simple and fair and complete). If you want to shorten it to an unreasonable period of time (as determined by law), we’ll listen, but ya better have an answer as to why.
Clients do not respond to Office Actions (for the most part). Full time patent attorneys typically do. Full time patent attorneys working on a multitude of cases for a multitude of clients. The Office already has four months to take action while the client’s representative only has three. Now you want to change the differential to 16 weeks vs. 2 weeks? What difference in responsibility or workload justifies that?
Take all the time that you like. I merely suggest that the time consumed by the applicant, beyond a reasonable period of time, should not count against the PTO and the rest of us. The time used by the PTO should count against the PTO, and the time used by the applicant should count against the applicant in the form of a shorter term. Seems pretty simple and fair to me.
Once your client gets his patent and starts suing infringers, at some point his litigation counsel is going to be faced with a MSJ of invalidity. If the patent is of any consequence, such motion will be better researched and better argued than any rejection you get from the PTO, not to mention urged by a party with much more skin in the game than a patent examiner. Your client will then be lucky if he has three weeks (nonextendable) to respond. Of course your client won’t be drafting the response; it will be drafted by full-time litigators, full-time litigators working on a multitude of cases . . . .
The problem here is that a notice of appeal and brief by the applicant does not start the appeal. The Examining division decides in all cases whether to proceed with the appeal. So Neds seems right. And it happens very often that the Examining division does not proceed. Indeed, it has happened in the last 10 appeals that I have filed.
I have this issue on petition in two cases now, where it happened 3 times in both cases amounting to hundreds of days of lost term. Are there others with whom we might share Dist Ct costs?
“dear“??
Hey Cy, don’t get all soft on me. Geesh, one guy has wet fantasies about me an 6 having drinks and now Cy’s all deary.
Second, I done not ask anyone to tell me about my posts. Sure, I peppered my observation with a little bit more law than usual – someone’s gotta pick up the slack from Ned not doin his homework. But I aint write no four page law journal article here.
Sides – if ya got a substantive comment about my observations, come on out with it. Just because ya dont like the the observations and they don’t square with how you want things to be, don’t mean that that big Ol loophole aint really there.
Ping, dear, you asked to be told when your posts begin to resemble NAL’s. It’s happening.
Your pal,
Cy
Ned,
In the real world, how often – without any interceding action by the applicant – does the Director (or examiners under his dominion) sua sponte enter a new rejection or allow the case?
Nonetheless, ya do get kudos for the nuance here recognizing that not every appeal stems from a final action.
37 CFR 1.113 is permissive to the examiner to make the action final and force the path of appeal, or not.
In the case wherein the examiner chooses not to make the rejection final, 131/132 is still open, and the time evaluation is as you say.
However, in those case where finality is proclaimed, even though the status can be changed, a limbo land has been entered. For all legal purposes, in these cases, before (and if) any action occurs that changes that final status, 131/132 is in fact not in play – even though the application has not changed custody. It is here that your nunc pro tunc declaration fails.
While there is no issue in regards to if an examiner actually does do one of these 131/132 actions (restart after final)and starts up examination process again, the “gamed zone”, the issue, is the middle time, the time after the twice (here actual final) rejection and the reopen prosecution time. It is this time in this situation that is falling through the crack. The mere possibility of the Office changing the status does not in fact change the status until the Office takes an actual action that does change the status. Ya still need to address my point above in this situation, cause this be the situation that be the focus of this thread.
As you have been away from prosecution for years (and years and years), you may not appreciate this subtlety, so I will throw you a bone on this one, and give ya a another shot at your homework here.
HTTAM,
How long can a Trademark retain its power? How long can a patent?
That’s more than a small difference.
ping, the right to appeal arises after two adverse actions, but it is the docketing of the appeal that ousts the Director’s jurisdiction to act. Until that time, the Director may enter a new rejection or allow the case, thereby removing the grounds of appeal. Removing the grounds of appeal moots the appeal. However, it may also raise new grounds for a new appeal.
131/132 commands the director to examine/reexamine/issue the patent. So long as he has jurisdiction, he is doing one of the things authorized by 131/132.
Now, if a notice of appeal ousted the Director’s jurisdiction from entering a new rejection or allowing the case, I would agree with you that jurisdiction has been passed to the “judicial” system. But that is not what happens in reality. It is the docketing of the appeal that ousts the Director’s jurisdiction.
871 days
Now THAT’s expeditious!
The PTO does in fact give day-for-day patent term adjustment for appeals, => but only if you win. See e.g. File wrapper for US 7045513 (from date of Notice of Appeal to BPAI reversal was 871 days; PTO extension was thus 871 days).
“The better interpretation is that ‘appellate review by the Board’ for Part (B) does not begin until after the examiner answer. Certainly, until that point, the case-file remains under the examiner’s control and not under reveiw by the board.”
Since March 30 of this year, the Board is responsible for reviewing an Appeal Brief to determine if it complies with the Rules and can be entered. 75 FR 15689 (March 30, 2010) and MPEP 1205.03. Then the case returns to the Examiner for preparation of the Examiner’s answer. And, in a strange twist (which I have recently experienced) the examiner is responsible for determining if the Reply Brief complies and can be entered.
So, it would appear that, after an Appeal Brief is filed, control of the case is temporatrtily transferred to the Board, then back to the Examiner. This quirky procedure will further complicate determination of PTA.
Walter–
With due respect, I think that your reading of 134(a) doesn’t go quite far enough.
The entirety of your arguments rests on your characterization of “appeal” as an “unqualified right”.
As I read it, any “right” contained in 134(a) is not the right to appellate review, but instead the right to pursue appellate review.
An applicant appeals FROM the decision of an examiner, TO the BPAI. I don’t see how 134(a) abrogates the authority of the office to have an examiner make a decision on an issue at any time.
Any right arising from 134(a) is not unqualified–there are many qualifications, including having had a claim rejected twice by an examiner–that is, an examiner having decided twice to reject a claim.
So, does a third decision by an examiner, to “withdraw” or “remove” a rejection, legally operate to eliminate the second decision to reject? I think it does. There are no longer 2 adverse decisions to support appellate review. The Board’s authority is specifically limited by 35USC6(b)to “review adverse decisions of examiners”.
I think that this is the better construction, as opposed to now having 3 examiner decisions and basing a “right of appeal” on the existence of only the first 2.
If the situation was characterized as 2 adverse decisions followed by a third favorable one, does the applicant have a right to review based upon the existence of 2 adverse decisions?
The answer to this should be negative, based upon 35USC2(b)(2)(C), which allows the PTO to “establish regulations, not inconsistent with law, which shall facilitate and EXPEDITE the processing of patent applications…”. Any attempt to resolve an issue at the behest of an applicant that has already been resolved in the applicant’s favor can hardly be considered expeditious.
I realize that the authority to promulgate procedural rules is being pitted against what you characterize as a substantive unqualified statutory right. Reading the entirety of 35USC, I don’t see the “right” in 134(a) as “unqualified”.
If the right WERE unqualified, in the case where a rejection has been withdrawn, the “right” would amount to no more than a “procedural right”, and not in support of any substantive goal as contemplated by Congress.
I understand that “re-opening of prosecution” is language that is commonly used, but I don’t think that EXAMINATION by the PTO is ever ended until the patent is actually granted, BPAI appeal being one manifestation of the examination power granted in 35USC131. Exactly HOW and WHEN the PTO can conduct examination is never specified, but the main goal of the PTO must always be borne in mind when making such determinations.
I think it’s even lawful for an examiner to “re-open prosecution”, “withdraw” a rejection, and issued a new rejection, in some cases.
The same problems are with trademarks. After all, there’s a small difference between them: patents apply to protecting an invention, which a logo or brand name is, so trademarks have the same purpose with them.
Ned,
Isn’t the action that leads to appeal one of finality? How can you merely proclaim “nunc pro tunc“? While it is granted that the right to appeal, notice, briefs, answers and replies are not actions “of the board”, neither are they of prosecution under 132 (no matter how much you scream and cry and throw a tantrum). It just doesn’t matta that the examiner still “has” the case, the above actions are simply not in the classification of prosecution under 132. The loophole, ugly as it is, is legit.
It is too legit to quit.
If the examiner enters a new ground of rejection, or allows the claims, it seems the grounds for appeal are effectively revoked, nunc pro tunc. Thus, the whole period until the time the commissioner no longer has the authority to revoke the grounds for appeal must be considered prosecution under 132.
The right to appeal, the notice and the briefs are not the actions of the board. The board does not “have” the case until it is docketed and the commissioner can no longer act.
Agreed, Walter. This entire appeals procedure issue — everything from PTA to the right to re-open prosecution — is badly in need of judicial review and oversight.
One issue I don’t see discussed here is the refund of the appeal fees. Currently, once the appeal is docketed with the BPAI, the applicant is no longer entitled to a refund of the appeal notice and brief fees. If BPAI were to take jurisdiction of the appeal before examiner re-opens, I can see the PTO saying that applicant forfeits the appeal fees when the examiner re-opens, particularly if he grants any claims.
I would also venture to guess that where you find a mess like this at the PTO, if you dig deep enough in the poo, you’re as likely to find POPA as you are to find the administration and politicians.
POPA in the poo. There’s a poem in there somewhere. Sarah?
“after the appeal is taken”
The “appeal being taken” seems to be the stickin point – Congress stellar writin job indicates that one portion indicates o’ the “taken point” isn’t quite matchin up with what another portion says.
Whether the Office has a reason to delay docketing at the BPAI or not be just another game the Office uses – sorta like how it defines “Quality“.
Even your statement of “on Appeal” lacks the critical distinction of “at the Board.” So when you say “actions have to be treated by the Office as delegations of the authority of the Board” you are just wrong. Wishful thinking perhaps, but just the same – wrong.
What you have is a gap being gamed by the Office (gee, anyone find that surprising?). Thing is – it appears to be a perfectly legit (i.e. legal) game move.
Oh, and good luck with the petition process – ya wanna talk about another Office blackhole…
I disagree with the whole discussion here.
The key to understanding the time on appeal to the Board is found in 35 USC 134(a).
The applicant has a right of appeal under 134(a). This is an unqualified right. There is no authorization for the Office to do anything after the appeal is taken other than to issue a decision by the BPIA on that appeal.
Consequently since the Office allows the Examiner to reopen prosecution or allow the case (without first getting consent of the applicant to withdraw the appeal), those actions have to be treated by the Office as delegations of the authority of the Board, not as ordinary prosecution. Any other treatment violates the applicant’s appeal right and hence the APA.
The Office has no reason to delay docketing the appeal at the BPIA until after the Examiner’s Answer. Whether or not the Examiner reopens prosecution, the case is on Appeal once the applicant has invoked 134(a).
Under the current office construction if the examiner keeps reopening prosecution prosecution can extend for years after an appeal has been taken but there is decision on the appeal and so no type C term extension The issue is particularly problematic when an RCE has been filed. Applicants are being denied property because the office refuses to treat the Examiner’s decision as a decision by the Board by delegation.
I have filed several petitions that challenge an examiner’s right to reopen prosecution (in one case the Examiner reopened twice after filing an appeal briefs and another time after an indication of allowability) but I have never gotten a decision on that issue and never had a client willing to bring an APA case.
“There is nothing in 35 USC 154(b) that is dependent upon the attorney’s alleged ability or inability to persuade you prior to appeal.”
Nobody said there was. I was answering the “policy” concerns that some people are making concerning the amount of reopening.
“If this logic is adopted for the BPAI, how then does that same logic apply to federal courts? As soon as subject-matter jurisdiction is established? The close of briefing? Docketing?”
I don’t believe that anyone is arguing that the interregnum between a BPAI decision and a filing in the Federal courts is not appellate review. I also don’t see any practical analogy. The USPTO would have to withdraw a rejection between a favorable BPAI decision and the filing of a complaint in the Federal Courts for the interregnum to even be comparable to what we’re discussing here. Once you were in Federal court, the Office would not be able to unilaterally end the proceeding, and the attorney would press for a dismissal with prejudice, which would indeed constitute a decision.
BTW, who does “commissioner’s opinions” nowadays? K or the Commish for Pats? K could issue an opinion on the matter at hand, which, of course, would be given deference by the courts.
Cy Nickel, I said if there is any room for doubt, K should make haste to the courts for a definitive ruling. I never suggested that K should not first construe the statute. I would also like for him to issue an opinion we all could read, sooner, rather than later.
“I see no particular reason for the office or congress to go soft on you. The things I see in (other people’s) appeals these days could be resolved in 5 to 10 minutes most times if the attorney had as much skill as I have in my little finger. Instead, we see ourselves in a lengthy review process thanks to sub-par advocacy by individuals that don’t know how to persuade.”
There is nothing in 35 USC 154(b) that is dependent upon the attorney’s alleged ability or inability to persuade you prior to appeal. Every longtime practitioner is familiar with instances where same arguments presented after a final or non-final rejection, when presented in an Appeal Brief, mysteriously result in a new rejection that is even more mysteriously not presented as a new ground of rejection in an Examiner’s Answer. I’ll see your “individuals that don’t know how to persuade” and raise you an “examiners who finally realize that a slapdash rejection won’t survive on appeal.”
Real Name, your point about a consistent interpretation is being upheld under the office’s view as well though. You simply leave off the modifier in C to support your view that there is an inconsistency currently. There is not, the office understands “The modifier in C is quite clear, it means that you would get your PTA under the office’s interpretation, under that section, without it being there to specifically exclude the situation where the examiner reopens or you withdraw the appeal.
“If the examiner’s preparations are construed as “appellate review by the [BPAI]”, then the examiners decision to reopen prosecution and remove grounds of rejection is “a decision in the review reversing an adverse determination of patentability.” The examiner has reversed themself. The statute does not require, as you appear to suggest, a decision by the BPIA itself. It certainly implies it, given the reference to “appellate review,” but then what of the (B) adjustment?”
Upon perusal I have little problem with you getting PTA if you get an allowance immediately after reopening. That seems like a reasonable interpretation under the statute as written, you might get that from the office.
The only thing is, technically the review by the board of appeals never went to “decision”. The examiner’s “preparations” are not “construed” as BEING “appellate review by the [BPAI]” they are construed as the office’s preparations for such which TAKE PLACE DURING THE TIME that the application is under appellate review by the BPAI. Therefor, you wanting to call the examiner reopening a “decision” is kind of misplaced.
Ur the one wanting the time wasting procedure of an appeal, I see no particular reason for the office or congress to go soft on you. The things I see in (other people’s) appeals these days could be resolved in 5 to 10 minutes most times if the attorney had as much skill as I have in my little finger. Instead, we see ourselves in a lengthy review process thanks to sub-par advocacy by individuals that don’t know how to persuade.
“Spoken like a true non-professional.
The job of a good manager is to make you care about the things that matter. Kappos is a good manager, and I suspect that he’ll decide that this matters, at least a little.”
PTA is someone else’s dept. tard. I’m sure they care about PTA very much. And they’re the ones that decide if you get it or not. The examiner doesn’t care because he does not determine if you get it or not. We only care about doing the best job that we can, and if something happens then it is someone else’s dept to deal with it in terms of PTA.
RNR–
“The statute does not require, as you appear to suggest, a decision by the BPIA itself. It certainly implies it, given the reference to “appellate review,” but then what of the (B) adjustment?”
There is, IMHO, a stronger argument on statutory construction and jurisdictional grounds that (C) (iii) actually does require BPAI action, than there is on statutory construction grounds that (B)(ii) includes anything after the Notice of Appeal.
I think that there is a decent argument for consistency, as the 2 provisions concern the same issue, and as the wording is identical.
If this logic is adopted for the BPAI, how then does that same logic apply to federal courts? As soon as subject-matter jurisdiction is established? The close of briefing? Docketing?
And we sure as f don’t care whether u get PTA or not.
Spoken like a true non-professional.
The job of a good manager is to make you care about the things that matter. Kappos is a good manager, and I suspect that he’ll decide that this matters, at least a little.
I’m not sure I would place this on K so quickly. Sure, it’s his table the buck stops on at the end of the day, but this seems like an area that he hasn’t focused on (yet), and the doings seem like a Dufas type of policy carryover (i.e. screw the applicant at every chance).
Ping, I didn’t mean to place blame on K at all. I’m thrilled with the changes he’s introduced. I was just reacting to Ned’s suggestion that the PTO has no responsibility or authority to do “statutory construction.” Of course they do. What they don’t have is the authority to ignore parts of the statute.
“Giving applicants PTA’s in these situations would also reduce the incentive for anti-patent weenies in the examining corps like 6 to keep jerking applicants around.”
U not really, keep dreaming. We reopen for many reasons as I’ve explained on these boards. And we sure as f don’t care whether u get PTA or not. I personally only care because this is u guys qqing. As usual, and it makes u look bad.
“Yeah, because the Federal Judge can yank your appeal and issue a new ruling if he doesn’t like his first. Keep up the good work, genius.”
Um no, because ur opponent can yank ur appeal and u win. Just like at the board. You want the rejection withdrawn. Good for u, u won and had it withdrawn.
Thing is, u tards want the ability to “win” and get an allowance rather than “win” and have the rejection withdrawn. Or else you want to qq about PTA. Sorry, that’s not what the statute says.
“6, your interpretation completely eliminates any meaning to the stautory phrase “by the Board of Patent Appeals and Interferences or by a Federal court.” That period of time where my appeal brief is sitting on your desk while you and your SPE decide whether you want to embarass yourselves is not “time consumed by appellate review by the BPAI.” If Congress had meant to say “any time arbitrarily consumed by PTO lackeys, without any controls or oversight, after the applicant serves notice that he has been twice denied a proper examination” then they could have done so.”
Sure it is, we have to have time to prepare our side just like u get time to prepare ur brief. The first step in “review by the BPAI” is, by procedure (which u well know), both sides presenting their view.
If we SO HAPPEN to decide to not press forward, well, u win, be happy.
RNR – Your approach is consistent, even if it takes some liberty with the statutory language. But it’s not what the PTO is doing.
The Office is denying PTA under (B), while not granting commensurate PTA under (C).
That’s a problem.
RNR – I’m with you on consistency, and you present a credible interpretation of the statute.
Dennis,
I respectfully suggest that you’ve rewritten 154(b)(1)(C)(iii) by omitting sections of the text, although I agree with your argument and conclusion so long as “appellate review by the Board of Patent Appeals and Interferences” is construed as time when the case is docketed for review by the Board, rather than including all of the time between the filing of a notice of appeal and docketing before the Board.
The point of my argument was not to advocate for including examiner actions under the (C) adjustment, but for a consistent interpretation of appellate review within sec. 154. You appear to be following the USPTO in applying different interpretations of “appellate review by the [BPAI]” between the (B) and (C) adjustments. Once again:
154(b)(1)(B)(ii) excludes “any time consumed by appellate review by the Board of Patent Appeals and Interferences or by a Federal court.”
154(b)(1)(C)(iii) subsequently credits “appellate review by the Board of Patent Appeals and Interferences or by a Federal court in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability.”
If the examiner’s preparations are construed as “appellate review by the [BPAI]”, then the examiners decision to reopen prosecution and remove grounds of rejection is “a decision in the review reversing an adverse determination of patentability.” The examiner has reversed themself. The statute does not require, as you appear to suggest, a decision by the BPIA itself. It certainly implies it, given the reference to “appellate review,” but then what of the (B) adjustment?
So long as you require consistency in the construction of “appellate review,” there is not a problem in applying the (B)(ii) exclusion and the (C)(iii) credit. It is only when you follow the path of 37 CFR 1.702(b)(4) and (e) that the problem arises.
My hunch is that the right of examiners to re-open has had the opposite effect of what was intended — the number of appeals filed has been driven up. And it’s another way examiners game the system. Examiners wait to see if there will be an appeal before they tidy up their sloppy work. And as long as examiner’s know they can sxew around with the applicant by serial re-openings, they can hold out for the RCE or continuation points.
This sounds like the kind of crxp that happens mainly in the software, computer-implement, and bizmethod arts, where there are few actual “inventions” and a reams of tiolet paper being thrown around to see what sticks.
The brewing patent term adjustment issue involves how to account for the prosecution delay when a patent applicant appeals a rejection that is later withdrawn prior to a BPAI decision .
Best solution would be for the PTO to simply stop withdrawing the rejections.
“It seems to me that we don’t want a system where the overwhelming majority of patents get term extensions.”
We had a system where very few patents had their own special term length. It provided for a term of 17 years from date of issue. When we switched to 20 years from date of filing, the 3 year goal period resulted. Otherwise, given the state of the Office, there would be a substantial reduction in the average term of patents resulting from original filings.
“So if 80% of the patents take longer than 3 years to prosecute, we should allow the PTO longer than three years. If that doesn’t result in a long enough term, then all patent terms should be extended.”
Meet the rock — clients and their political allies who will not accept a reduction in patent term to something less than 17 years unless that reduction can be attributed to the “fault of the applicant.” Meet the hard place — political interests who will not accept a patent term of greater than 20 years from filing (if they even accept that). There’s no monolithic “we,” and the “we” that you’re referring to… well the metaphor is fairly self-explanatory.
“You get a free two weeks to respond to an office action. Any additional time you take gets subtracted from your term extension.”
Clients do not respond to Office Actions (for the most part). Full time patent attorneys typically do. Full time patent attorneys working on a multitude of cases for a multitude of clients. The Office already has four months to take action while the client’s representative only has three. Now you want to change the differential to 16 weeks vs. 2 weeks? What difference in responsibility or workload justifies that?
BTW 35 USC 133 provides applicants with a minimum of 30 days to respond to any action.
“But it seems like in most of the file wrapper I’ve ever looked at responses get filed on the very last day, frequently after an extension.”
You appear to believe that the attorney’s review of the Office Action and art, the client’s review of the Office Action and art, the conference where a decision is made as to how to address the Office Action and the art, and the drafting of the response all occur on the last day. Nevermind research into any factual or legal issues, the preparation of affidavits, and approvals from other parts of the business. Then there’s the minor complication that the client is usually attempting to run a business in addition to securing a patent.
Your observation about filings “on the very last day” is practically a non-sequitur. How is filing on the very last day, with or without extensions, evidence that less time is necessary? How many projects have you participated in that are not completed at, or very close to “the very last day”? What evidence do you have that the deadline is unduly lax?
“The underlying assumption in all of these discussions seems to be that applicants are in a hurry to get patents.”
The explicit discussion in the adoption of the PTA rules, the term of 20 years from filing, and the like was what were reasonable times for prosecuting an application and obtaining a patent. If an applicant is ‘in a hurry,’ they seek Accelerated Examination. Your suggestion that all applicants are ‘in a hurry’ as opposed to wanting the USPTO to proceed at a reasonable pace is a false premise. Your suggestion that because an applicant wants the USPTO to act within three years, they must themselves act within mere weeks is simply illogical.
As others have already pointed out, the rules already punish for applicant delay, and credit for Office delay. If you dislike the credit, address the causes of the credit. Increasing the punishment to reduce the credit won’t solve the problem, even assuming that you can convince the right people that shorter deadlines are reasonable.
RNR–
I agree with Dennis that a post-appeal withdrawal of a rejection is not equivalent to a BPAI decision reversing a rejection.
The words ‘the review’ in the phrase “…a decision in the review…” have as their antecedent basis “…appellate review by the Board of Patent Appeals and Interferences or by a Federal court…”.
This would seem to clearly exclude any other review, including examiner review.
Yes indeed, the PTA statute is indeed a strangely overly-complex last minute patch-up job, made during the 1999 AIPA legislation final push, primarily to humor a particularly vocal CA Congressman who wanted absolute insurance that patents would still get at least 17 years of life from issuance. [Why is that is not addressed in any pending patent reform legislation?]
Thus, the only mystery to me is that oversights and ambiguities in this statute have taken so long to surface in litigation challenges?
Perhaps because there are not really than many patents where the very last years of life were considered to be that important? Especially with the very short time provided provided in this statute for challenges? [Note the large number of patents abandoned by the time the final maintenance fee is due at 11.5 years from issue.]
The statute (not the just regs or MPEP) speaks of time “consumed by appellate review by the BPAI.” Except in the rarest of cases, the words of a statute are to be strictly construed. There was no “appellate review by the BPAI” in the case in point.
Consider, also, Rule 41.35, which provides “Jurisdiction over the proceeding passes to the Board upon transmittal of the file, including all briefs and examiner’s answers, to the Board.” Since the file was never transmitted to the Board (and the Examiner never prepared the requisite Answer), the Board never took jurisdiction. There can be no “time consumed by appellate review by the Board” where, as here, the Board never even had jurisdiction.
Given the value of patent term in some industries, I think this issue is due for a Wyeth-like challenge. (I’ve got three such cases myself.)
Cy,
I’m not sure I would place this on K so quickly. Sure, it’s his table the buck stops on at the end of the day, but this seems like an area that he hasn’t focused on (yet), and the doings seem like a Dufas type of policy carryover (i.e. screw the applicant at every chance).
Mayber we’ll see the take charge K pre-empt another Court beat down like the first PTA “shocker” and summarily change the direction that we all know should be in place. Then again, there is no shortage of Office folk that firmly believe that the applicant is wrong no matta what.
Real name has subtly shifted this discussion. Thanks.
Because I have virtually stopped filing RCE’s and started filing appeals, I have seen a scenario quite frequently where the examiner ignores all of the rules about what he/she has to do to re-open a case and merely files another office action after the appeal notice or, more likely, after the appeal brief.
There is no statement that the case is re-opened, no approval of supervisor, and they don’t enter after-final amendments — all of which they are required to do. MPEP 1207. And so there you are back in limbo-land not knowing whether the appeal is alive or dead. At this point PTA is the least of the prosecutor’s worries.
My hunch is that the right of examiners to re-open has had the opposite effect of what was intended — the number of appeals filed has been driven up. And it’s another way examiners game the system. Examiners wait to see if there will be an appeal before they tidy up their sloppy work. And as long as examiner’s know they can sxew around with the applicant by serial re-openings, they can hold out for the RCE or continuation points.
There should be an intake section of the BPAI which takes control of all appeals as soon as the notice is filed. If examiner wants to re-open, the procedural steps should be carried out by the BPAI intake people.
Well, in the end, its all statutory construction. That is the province of the courts and not the K. If there is any doubt, he should let the courts decide and should arrange a test case in as soon as feasible.
With all due respect, Ned, that’s baloney. Administrative agencies (and every other part of the executive branch) have to interpret statutes all the time. “The K” has a staff of lawyers for exactly the purpose of deciding what Congress has directed them to do. These lawyers should be instructed to do a good-faith construction of the statute and a good-faith drafting of corresponding rules. Instead, they’ve clearly been told to come up with a forced construction that does nothing to serve the public interest but that just happens to partly mitigate an embarassing statistic, i.e., the quantity of PTA that must be granted.
Real Name Redacted – Thanks for your post. I am somewhat confident that the drafters (and lobbyists for the statute) did not specifically consider the reality that so many rejections would be withdrawn after the filing of an appeal brief. A more careful drafting of the statute-in-question might have treated a post-appeal withdrawal of a rejection as equivalent to a BPAI decision reversing a rejection.
However, that is not how the statute is actually drafted. In particular, Part (C) extension for appellate review is clearly limited to times when the “appellate review by the Board . . . revers[ed] an adverse determination of patentability.” It is hard to imagine how an examiner withdrawing a rejection (without any action by the Board) could fit within this clause.
We’ve petitioned a PTA calculation over this very issue, and the Office has not acted on the petition in three months.
The statute as written is fine.
154(b)(1)(B)(ii) excludes “any time consumed by appellate review by the Board of Patent Appeals and Interferences or by a Federal court.”
154(b)(1)(C)(iii) subsequently credits “appellate review by the Board of Patent Appeals and Interferences or by a Federal court in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability.”
The Office rules, on the other hand, treat “appellate review by the [BPIA]” as including everything after the Notice of Appeal, but a “decision in the review” as only including an opinion of the Board. If the Office interprets “appellate review” as including everything after the notice of appeal, then the examiner’s decision to withdraw a ground of rejection rather than file an Examiner’s Answer constitutes “a decision in the review” and is creditable under (C). If the Office interprets appellate review as including only action by the BPAI, then docketing with the BPAI is almost the only logical starting point.
Our client’s circumstance is even juicier. The examiner did not respond to after-final arguments, and a Notice of Appeal was filed to prevent the app from being abandoned. The day the Office received the Notice of Appeal, the examiner began a new non-final OA (BTW I have no reason to believe that this was in response to the Notice, the examiner had started a new search the week before). The non-final OA was mailed about a month later, before any appeal brief was filed. In the present petition, we’re challenging whether an “appellate review” can even be said to have occurred.
Well, in the end, its all statutory construction. That is the province of the courts and not the K. If there is any doubt, he should let the courts decide and should arrange a test case in as soon as feasible.
“It seems to me that we don’t want a system where the overwhelming majority of patents get term extensions.”
it seems to me that no one wants the result. But let’s not be in such a hurry to punish the applicant for the Office inability to meet its guarantee. Yet another sign of someone who is clueless as to real world goings on and just wants to blame the applicant and let the Office skate.
IB, if you were cogniznat of the law, you would already recognize that the time applicants take in answering beyond the statutory (read that – legal) time period is subtracted. Are you really grousing over the applicant’s legal reply period when the Office cannot meet its THREE YEAR commitment in these some 80% of cases?
Docketed. That’s my vote. Until then, it is all examiner and none BPAI.
It seems to me that we don’t want a system where the overwhelming majority of patents get term extensions. So if 80% of the patents take longer than 3 years to prosecute, we should allow the PTO longer than three years. If that doesn’t result in a long enough term, then all patent terms should be extended. But a system where 80% of patents have their own special term length is crazy.
I happen to think that we should subtract any applicant delays from the calculation. You get a free two weeks to respond to an office action. Any additional time you take gets subtracted from your term extension. The underlying assumption in all of these discussions seems to be that applicants are in a hurry to get patents. But it seems like in most of the file wrapper I’ve ever looked at responses get filed on the very last day, frequently after an extension.
I can’t wait to share some of the other stories I have about things that were done to me. And I knew it was because of this mess.
There was a Lawyer I went to see. I was told earlier by two women I knew that worked for Him that he was a real Porno Pig. I thought oh well I am sure he ain’t the only one. It turns out that it was WAY worse than that. He got busted. I saw them in a grocery store after he got busted by the Feds. I asked them if they were still working for the Lawyer. You know what they told me? They said he was trying to be a Judge and was taking time off to run.
Later I found out that they even lied to the FBI. They said he was a wonderful man in a newspaper article. And he could never be the man that he was arrested for. And all the time they were lieing. They even knew things that were going on before he was arrested in Fla.They could have stopped it there.
And the reason I mention this now. Is because of the erroneous legal advice he gave me. And he told me I owed him nothing. At least an hour in his office. But I left a check at the front. And I knew he was full of Crxp. He obviously was told to fill me full of Crxp.
I have so many more stories related to the last 15 years.
Am I gonna lose another Mailman… LOL. I guess he don’t like to lick envelopes.
sarah,
Let’s not forget the cheese too – they done take the cheese right quick.
6’s Brother,
Not sure if PTA was ever a HMS Boundy issue. From where I sit, the Congress F’d this up by inconsistency in its writing of the rules. Of course, the intent as noted by Cy and Phillies is pretty clear and Iza can see the courts easily reprimanding the Office for playin bureacrat.
Ima curious – brother, you still mad at 6 for dating your sister?
This sounds like an issue for mah boy Boundy. Where is he?
Now why would they do that?
They now had the Milk and the Cow. They did everything but slaughter Her.
The statute is quite clear, when the applicant is unsatisfied with the examiner’s position on an app 2x rejected then they can appeal. Whether or not the examiner has “control” of the case is immaterial, when u file appeal ur in appeals land under a specific section of the statute.
Yeah, this is the way a number of examiners approach claims, too – just ignore the phrase in the claim (or statute) that’s inconvenient.
6, your interpretation completely eliminates any meaning to the stautory phrase “by the Board of Patent Appeals and Interferences or by a Federal court.” That period of time where my appeal brief is sitting on your desk while you and your SPE decide whether you want to embarass yourselves is not “time consumed by appellate review by the BPAI.” If Congress had meant to say “any time arbitrarily consumed by PTO lackeys, without any controls or oversight, after the applicant serves notice that he has been twice denied a proper examination” then they could have done so.
And because of this they threw him out of town? Or he left in disgust and went forward anyway?
Pondering this scenerio….. Fiction or Non
So the person that didn’t protect the client is gone?
And the next one knew that, but held on for a second bite?
And the third one did too?
So then the USPTO tried to hang it all on the third to hide what they did?
Who cares how the statute is written – the point of the whole PTA thing was to give applicants a guaranteed 17 years from issue, if the applicants were diligent in prosecuting their case. That includes compensating for f–k ups by the PTO. When an Examiner withdraws a rejection after an appeal brief is filed, that’s an admission that there was no basis for the rejection in the first place. I’d call that a f–k up on the PTO’s part (and no doubt standard operating practice for crappy examiners like 6). In such circumstances, the applicant is absolutely entitled to a PTA. It’s time for the PTO to figure out a way to interpret the statute to enable this to happen, instead of continuing to stonewall and pretend like it’s doing an effective job of examining. Giving applicants PTA’s in these situations would also reduce the incentive for anti-patent weenies in the examining corps like 6 to keep jerking applicants around.
Thanks Courtenay — I had not seen your post until now. link to pharmapatentsblog.com
I wrote about the PTO’s post-Notice of Appeal PTA calculations earlier this week. Maybe we can get some critical mass behind this issue and get this changed.
link to pharmapatentsblog.com
The PTO also refuses to award PTA even if the case is allowed before an Appeal Brief is filed.
As I point out, one part of the statute cited by the PTO excludes from “B Delay” any time consumed by appellate review by the Board. On the other hand, the PTO rules provide that a case is not even docketed to the board until after the Appeal Brief, Examiner’s Answer and Reply Brief are filed.
“That’s like saying because a case in a courthouse isn’t docketed at the Fed Circ. just yet then it isn’t under appeal, after someone plainly filed an appeal.”
Yeah, because the Federal Judge can yank your appeal and issue a new ruling if he doesn’t like his first. Keep up the good work, genius.
” The better interpretation is that “appellate review by the Board” for Part (B) does not begin until after the examiner answer. ”
I can’t say I necessarily agree with u D. The statute is quite clear, when the applicant is unsatisfied with the examiner’s position on an app 2x rejected then they can appeal. Whether or not the examiner has “control” of the case is immaterial, when u file appeal ur in appeals land under a specific section of the statute.
I therefore get substantial lulz from your taking the notion that the examiner having “control” during the first phase of the appeals process somehow negates the fact that the case is under appeal. The first part of the appeal is everyone getting their case presented for appeal. As a lawlyer u know that. That’s like saying because a case in a courthouse isn’t docketed at the Fed Circ. just yet then it isn’t under appeal, after someone plainly filed an appeal.
Gl with that. And to anyone who fights this fight that is a brewin’.
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