117 thoughts on “Correlating Patent Term Adjustment with Patent Claim Count

  1. Thanks Dennis. BTW, for affected cases, the result will be extra months of PTA, not a few weeks. It’s out of date, but you posted some numbers on the average time from allowance to issue:link to patentlyo.com…Also, in appropriate circumstances, applicants may want to consider paying the issue fee right at three months to increase PTA.

  2. Dennis,After reviewing carefully the B period provision of the PTA statute, as well as the ED of Va opinion in Exelixis, the more I become convinced that, while this Federal Circuit panel’s reading of the B period provision is plausible, it isn’t the best, or in my opinion, correct reading of it. This panel’s reading is especially in conflict with the intent of the B period provision to not have patent term consumed due to delays caused by the USPTO (rather than by the applicant) in issuing the patent within 3 years of the filing date. If you read the “not including” exclusion language in context, these exclusions all relate to actions taken by the applicant that will delay issuance of the patent in this 3-year window. That’s very apparent from the third exclusion which relates to “any delay in the processing of the application by the [USPTO] requested by the applicant.” In other words, if, for example, the applicant filed an RCE within that 3-year window, that would be treated presumptively as a “delay by applicant” that caused the patent to not issue within 3 years of the filing date. In fact, and using the example of the RCE, you might also interpret these B period exclusions to be tolled (as the Federal Circuit panel apparently did) once the RCE period ends (e.g., there is a Notice of Allowance). In sum, I agree with how the ED of VA ruled in Exelixis that these exclusions are applicable to B period PTA only when they occur within that 3-year window.

    1. EG,Your views mirror my own original views on the matter.There is now no mechanism to prevent the Office from effectively killing any application that it does not want to grant.Using the RCE process is now effectively giving permission to the Office to indefinitely delay even looking at the application, penalty free. It might even be arguable that you risk malpractice by placing your client’s rights into such an abyss (emphasis added). What is to stop the Office now from simply placing any RCE’d application into a time vault labeled “open 1 day after patent term expired” (and please, let’s leave aside the wooden ‘the Office needs patent maintenance fees’ counter for the moment).That result simply cannot square with the intent of the legislation. The mechanism of the RCE has been swallowed by this case.Of course (for those willing to actually listen and not go a-charging), there is a critical nuance. Just as the Office should not be given such an effective power, there was a weakness in Exelixis I that created a potential situation that also did not fit well with the legislative intent. Entering into RCE land after the three year window guaranteed a full day-by-day submarine effect that would enable applicants to advance prosecution at a crawl.Granted, this weakness was technically fully within the power of the Office to control. This is so because IF the Office had first lived up to all of its prescribed guarantees, THEN any and all RCEs would have been needed to have been entered BEFORE the three year guarantee window came into play.Once again, the best possible solution was probably not an option for the court, as that solution would entail the court simply rewriting the law on PTA.(add: EG, by your comment of tardy advance, I am thinking of a crawl just slightly ahead of any Borgese style of Office control mechanism – any advocate can easily file ‘reasonable’ RCE after RCE making such incremental advances in prosecution. Please note that I am not by any means advocating such a course and I am merely saying that it is easily possible)I wonder if Kip has had the time to update his views on this. He does seem to have scored a few points.

      1. anon,Thanks for your comments. That’s an interesting point you make about filing the RCE after the 3-year window as a new potential “submarine effect.” The USPTO does have the ability to reduce PTA for such a tardy advance of prosecution by the applicant in Section (b)(2)(C)(i)(Reduction of Period of Adjustment). How the USPTO would exercise such authority is another matter for concern.What the exclusions in the B period provision of PTA has done is to undermine what I can consider a significant benefit of RCEs (over continuations) which is you start where the first round of prosecution now left off. Filing a continuation means you’re essentially starting from scratch in the prosecution, and having to bring the situation forward (most likely by filing an extensive preliminary amendment with the continuation,, including an extensive remarks section so that the Examiner will hopefully remember where the first round of prosecution ended); that’s quite a bit more paperwork over simply filing an RCE, especially if you want, for example, to have an amendment after final (AAF) entered that the Examiner refused to enter.Especially if this panel ruling stands, the RCE is likely to go the same way as paragraph 6 “means plus function” claims because of (in my opinion) an unduly restrictive and not necessarily correct interpretation of the statutes made by the Federal Circuit. Another unfortunate and unintended consequence of the PTA statute which was intended to help applicant’s recoup patent term for USPTO delays, not decrease it. What an absolute waste, and no way to “run a railroad” or a patent prosecution system.

  3. Why does the “deadspace period” run from RCE filing all the way to notice of allowance? Why isn’t it only from filing of RCE until the PTO’s response to/rejection thereof?

  4. I should note here that the post above simplifies the PTA issue considerably by focusing purely on the part-B guarantee. It is substantially more complicated once you also include the other potential avenues for PTA.

  5. This problem ultimately comes from three issues: A) Examiners are overworked, which gives them an incentive to string out cases they know will never result in difficult art searches. B) Because of A, bad applicants don’t know whether they have anything worth pursuing into RCE, which leads to most everyone filing RCEs. C) There’s no mechanism for the opposite to happen: If an Examiner knows there’s nothing good in the application he has no mechanism to prevent further RCEs from being filed, and he can’t exactly call up an attorney and tell them there’s nothing for them there.

    1. A smaller issue would also be that an Examiner is essentially a criminal prosecutor that a) works on contingency and b) whose accused gets to write the elements of the crime.As a result a lot of things are approached with a mentality that one should not screw up rather than more expeditiously solve the issue.

    2. “If an Examiner knows there’s nothing good in the application he has no mechanism to prevent further RCEs from being filed, and he can’t exactly call up an attorney and tell them there’s nothing for them there.”Sorry, but that is complete B$.The remedy is a simple thing called “do your job right.” A quality rejection will end all reasonable prosecution. Nothing will stop the unreasonable prosecution and we can ‘debate’ how much of that there is – I would start at about 3% of applications. IF I report back to a client and tell them the truth that the examination is CRP, more likely than not the client will say “continue.” If, on the other hand, I report back that the examination found solid art and the options include letting go abandon or obtaining a patent with such limited scope (perhaps with picture claims that will be too easily designed around), then the reasonable client will say “stop.”This is not rocket science.The problem with RCEs is p1ssp00r examination and no system for holding the examiners accountable for sticking with obviously p1ssp00r examination when the rush to final results in rewarding that p1ssp00r examination (the RCE gravy train was a very real thing, which Kappos helped slow).Alas, the card man (AAA JJ) is right even more now: Appeal everything.

      1. anon,Alas, please note that the appeal period also doesn’t count for B period PTA in view of this ruling, even if it is filed after the 3 year pendency of the application.

                1. Dennis,That’s what I was afraid you would say. “PTO practice,” like the MPEP, can change at a whim, for any reason or no reason at all. Also, as the Federal Circuit has made clear, “PTO practice” isn’t binding on the courts, especially the Federal Circuit, when it comes to construing patent statutes, including the PTA statute.

      2. “A quality rejection will end any reasonable production” hahaha. So I suppose you a) write perfect claims which b) conform to every feature of your specification and c) don’t bother filing an amendment when the FOAM is correct? The only thing a quality rejection guarantees is a response that is not argument only. Applicants routinely fail to use language with proper BRI. Applicants routinely add previously-unseen limitations from the spec. I think you’re confusing attorney responsibilities with Examiner ones.Btw, not to ‘debate’, but if 3% of the applications file 2 completely pointless RCEs, you could up Examiner efficiency by 6% in one swoop, which would make it the best non-hiring means of speeding prosecution in a decade. And that’s using a low number to start.The actual problem is poor specifications that don’t include the proper scope of protection that should be granted. Applicant claims “new” function F. Examiner shows F exists. Applicant has no means to further define F, so they keep adding in clearly old operating environment in the hopes that they will force the Examiner to add enough references that it can be called non-obvious. Since the “lesser scope of protection” never materializes, applicants keep going. If examiner allows, the complaint is the office is letting junk patents through. If examiner rejects, they’ll add “doing it over wifi” or some bull as a limitation, as if that would create patent ability.

        1. And I think you are being overly pedantic.Of course there might be changes based on some highlights from a quality rejection – I was speaking to the notion of an RCE – and last I checked, those don’t happen on the initial interchange.And your poor specification excuse is just as lame. I know of no one that operates as you suggest – adding in layer after layer of obvious elements in hopes of ‘forcing’ an examiner to ‘wear down.’Your non sequitur of “I think you’re confusing attorney responsibilities with Examiner ones.” has lost its meaning Try again.Too much Koolaid for you.

          1. Of course there might be changes based on some highlights from a quality rejection – I was speaking to the notion of an RCE – and last I checked, those don’t happen on the initial interchange. Right, but the logic is the same – the point I was trying to make is there are plenty of times the Examiner does all his job requires (which is limited to searching and rejecting the broadest reasonable interpretation of the claims before him) and RCEs will be filed by applicants who believe they are being (and in fact are) engaging in completely reasonable prosecution. Sorry, but suggesting that RCEs only result from an Examiner not doing a quality rejection is a ludicrous assertion on your part. And your poor specification excuse is just as lame. I know of no one that operates as you suggest – adding in layer after layer of obvious elements in hopes of ‘forcing’ an examiner to ‘wear down.’ In software, every element save one or two is clearly obvious. The Applicant knows he didn’t invent the computer, nor the operating environment, nor was he the first to encounter the specific problem. But the Applicant has a solution. He won’t tell you how to write code for it, but if you write code that achieves function F, everything will be all sunshine and lollipops. I find art that reads on F. Why does the Applicant come back and amend anything besides F? He knows he didn’t invent anything else in there. A processor that runs F will run F (and I got this in a new limitation today) regardless of if that processor is specifically designated as within a laptop.

            1. “Right, but the logic is the same”Absolutely not. Being pedantic means something – look into it. Further, the examination is NOT limited to the claims as presented – the application AND the claims are to be examined.Further – let’s clarify that not all RCEs are on the gravy train – I meant no such accusation (hence you being pedantic) – and at the same time, are you really trying to make the case that there was not an RCE gravy train problem?LOL – that’s about as funny as Malcolm’s fantasy world in which there was no Reject Reject Reject era.And do not limit yourself to “in software,’ ALL arts can be said to include many (fully patent eligible and patentable) claims that are comprised completely of elements old in the respective art.

              1. Further, the examination is NOT limited to the claims as presented – the application AND the claims are to be examined. The specification is only examined for objections and any definitional statements. Examiners are specifically told not to 1) import any limitations in the spec into the claims and 2) attempt to reject the specification rather than the claims. Further – let’s clarify that not all RCEs are on the gravy train What you said was The remedy is a simple thing called “do your job right.” A quality rejection will end all reasonable prosecution. You made a blanket statement that all RCEs either come from 3% of unreasonable prosecutors, poor examination by the office, or intentionally stringing out the examination (which I guess is a subset of poor examination). Your statement was incorrect. And do not limit yourself to “in software,’ ALL arts can be said to include many (fully patent eligible and patentable) claims that are comprised completely of elements old in the respective art. But in the other arts context matters. A lever or pedal in one context does something entirely different in another, because machines and their use are different. The addition of a chemical compound to one solution in one amount means something different than another amount in another solution. All applicants in software claims define computers the same way and are only claiming state changes, with the result being that a state change is a state change is a state change. Once it has been shown that a state change is known in the prior art, changing the environment into which you type the code isn’t going to render an obvious action non-obvious. Applicants know that, which is why they’re happy to add these pointless limitations – they’re not really shrinking the scope of potential infringement, and the addition of more references makes it appear to be less obvious.

                1. You don’t do this for a living , do you Random?Think enablement and possession – those are not claim rejections per se are they?As to importing or otherwise mishandling claims, that’s a pretty strawman you have – except no one is discussing such (same goes for your journey into the weeds with context – while you seem to miss that very same idea with your incorrect generalization that software – all software – is just merely a change in state – without recognizing the context of that change in state matters very very very much,doesn’t it. Or perhaps you believe in the 6 Belief System that the latest CD of Britney Spears is the same thing as the Microsoft operating system…).As to my comment on RCE’s perhaps you did not understand the phrase “let’s clarify”… I will give you a moment to look it up (you can look up the word pedantic while you are at it).Wake up son.

                2. Well said, RG.And don’t worry about resident “crazy guy” anon. You’ll never get him to admit that there is anything weird going on in the software arts. As far as he’s concerned, “Grandma’s ranked list of cookie recipes” is no different from “recombinant protein consisting of amino acid sequence of SEQ ID: 232″. That’s as deep as it gets with him.

                3. “Well said… [t]hat’s as deep as it gets with him”LOL – because Malcolm said so – oh how very Carroll of him.(Look at him “Accuse-Others-Of-That-Which-He-Does” as there are still no answers yet from Malcolm to the simple questions of law that lie at the heart of the software arts)There are two things ‘deep’ about Malcolm:The CRP he piles up, and the hole he digs on the off chance that he ventures forth into a discussion on the merits of law or fact.Here is a compilation that addresses Malcolm and his actions (worth repeating this post from another thread):Malcolm: “All you are doing is sticking your head in the sand and pretending that basic facts don’t exist”Me: LOL – beyond ironyMalcolm: “What kind of a person does that? A dishonest one. A person who can’t handle the truth. A coward.”Me: In other words, Malcolm.First principles first, Malcolm – before you even get to any patent whatsoever – answer the very very very simple questions that you keep running from. Let’s not see any of the cowardly dissembling and distraction.(maybe ‘Kenneth’ is down there with Malcolm’s head in the sand…?)

      3. My reason for appealling is not primarily PTA. I appeal because: 1) the applicant is entitled to the claim as the PTO has failed to carry its burden to establish that the claim is unpatentable; and 2) because I’m not going to reward examiners who do a lousy job in the hopes of extorting extra counts. I make an attempt to “work with” every single examiner I have a case pending before, and I do that by filing a complete response to their FOAM, and sometimes to their FR. If it’s clear to me that the examiner’s primary motivation is getting first class passage on the RCE gravy train, I appeal. PTA is nice, but I would appeal regardless of whether PTA was provided or not.

  6. Maybe I’m reading these wrong, but isn’t an appeal to E.D.Va. now due “180 days after the date of the Director’s decision on the applicant’s request for reconsideration?” Also, shouldn’t the graphic show the “Pre-RCE Period” starting 3 years after filing?

    1. For the part-B guarantee, you take the periods shown above and then subtract three years. If the result is >0 days then you get some PTA.

  7. I have long advocated against filing an RCE, unless absolutely needed. This decision cinches it for me. File an RCE at your own risk (and the risk of your client’s PTA).I can easily see a day where a client is going to sue an attorney for malpractice because the attorney filed an RCE for no good reason (except to appease an examiner looking for an extra count) and caused the loss of PTA.This decision further tilts the scale towards taking appeal when you have an application are under final. Win on appeal, and you gain a lot of PTA. File an appeal and the Examiner reopens, the clock for type-B PTA still keeps ticking. However, file an RCE, and the clock for type-B PTA stops.

    1. the attorney filed an RCE for no good reason (except to appease an examiner looking for an extra count)Good luck proving that.

          1. There were amendments filed, but they were not necessary. Too many lazy attorneys would rather amend, amend, amend instead of taking a stand with the claim language they have.I’ve seen many application were there were over 10+ office actions and at least 4 RCEs. While this may be good for the attorney’s wallet and the Examiner’s production counts, it doesn’t do the client any favor.I can recall one such case that I took over in which there were that many OAs and RCEs. I looked at the prior art, returned the claims back to their original state, and got a NOA on those claims.Too many attorneys are afraid to say “Examiner, you are wrong, and this is why you are wrong.” Instead, they would rather say, we amended claim 1 to include “X, Y, and Z and the prior art doesn’t show X, Y, and Z.”

            1. I certainly hope that your laying blame on “lazy attorneys” is misplaced, as the attorney should strictly be following the client’s wishes after that client is fully informed of the options.(although laziness and a professional lack of diligence and representation DO go hand in hand…)

              1. as the attorney should strictly be following the client’s wishes after that client is fully informed of the optionsAs I’m sure you are very aware, most clients are not sophisticated to understand the nuances of when claims should be amended and when they should not. Many attorneys are not.Typically, clients rely on their attorney to do what is best for them (i.e., the client). I’m saying that isn’t always the case (either unintentionally or intentionally). My guess is that most are unintentional because the attorney is taught to be an attorney … instead, they are taught to be a deferential scribe.

                1. “Many attorneys are not”Then that is a separate ethical violation.Such a violation cannot (and should not) serve as a justification for what prosecution should be.Further, to the extent that you know personally anyone failing such an ethical duty and you have taken no action, then you yourself have committed an ethical violation.Lastly, you insert a non sequitur with the “deferential scribe” comment. Part of the attorney’s duty IS to be a deferential scribe – after completing the informing of options part of their duty. The actual choice of action as to how to proceed always belongs to the client.

                2. Further, to the extent that you know personally anyone failing such an ethical duty and you have taken no action, then you yourself have committed an ethical violation.Dude … you don’t get it. Patent law is complex, and it is unreasonable to expect every attorney to understand all the nuances of patent law. Some understand them better than others … that is the way with all fields of law. It doesn’t make one unethical not to know everything about the law.Part of the attorney’s duty IS to be a deferential scribeDeferential, maybe … but not a scribe. Too many patent attorneys are patent engineers debating technology with examiner instead of attorneys that practice law.The actual choice of action as to how to proceed always belongs to the client.Way to cop out … “the client told me to do it.” Unless you are dealing with a sophisticated client, the client isn’t going to know whether you should amend, what you should amend, or how to amend. The client isn’t going to know what arguments to make. Most clients are going to say … “I want broad claims” or “let’s just take what we can get.” It is up to you, as the attorney, to figure out how to accomplish the broadly-defined goals of the client.

                3. Sorry PG, you are wrong in each instance.1) ignorance of the law is no excuse – even – or more to the point – especially for an attorney. Don’t QQ about attorneys practicing law without knowing what they are doing and then turn around and try to make it as if that very same thing is acceptable (and please no strawmen about perfect knowledge – no one ever said such thing).2) The deferential and scribe go together. Sure you need to use the law as well but that is a strawman you are creating as I never said otherwise (go back and re read what I actually said)3) If you think the proper understanding of the role of the client and the attorney is a “cop out” you have far bigger ethical issues than I thought. I suggest you pay special attention to the ethics in your next CLE go-around.

                4. Don’t QQ about attorneys practicing law without knowing what they are doing and then turn around and try to make it as if that very same thing is acceptableSo … 90+% of patent attorneys should be disbarred? There are very, very few sets of claims that I cannot rip apart for various reasons. Did I get to that point in year 1? year 5? year 10? No. The claims I write today I’ll rip apart a year from now — because I’m committed to always improving my craft.ignorance of the law is no excuse … please no strawmen about perfect knowledge – no one ever said such thingYou “said such thing” within the same sentence.The deferential and scribe go togetherThe term “scribe” has a special meaning for those that have frequented patent blogs for a long time. It is used in connection with patent prosecutors and used to contrast patent litigators (i.e., alleged “real” attorneys) and patent prosecutors (i.e., “scribes”), who really don’t practice law. I suggest you pay special attention to the ethics in your next CLE go-around.How about you save your vitriol for MM? Your “debates” with him are, by far, the biggest waste of space on this blog. While I almost always support your positions, you are aren’t doing our side any favors by acting like him.

                5. Your counters all miss – and badly so.1) you cannot have it both ways. Either the mistakes are egregious or they are not – choose one side and stick with it. You saying “I just said it” was in response to your attempt to say it – re read the exchange.2) The term “scribe”… again, you are attempting to change what was written – as I noted, the term scribe was part of a conversation (and was not used in isolation as you are now attempting to spin). You are now attempting to parse and spin that to say something I simply did not say. Re read what I actually wrote and note the part that I say that a lawyer has more than one part of duty. Pay attention.3) I share my ‘vitriol’ with anyone who exhibits the need for it. Malcolm most often does, but here, it is you. Open your eyes and take an objective view of our exchange and you will recognize the truth in my words. Sorry if that makes you sad. I hear that there are plenty of puppies out there. (my criticism may sting, but it is nothing like Malcolm’s vacuous commenting – you could not be more wrong in trying to equate us – my commenting is on point, uses the actual law, uses substantive points of law and fact and does not engage in the mindless tricks that makes up Malcolm’s repertoire).add: every downvote on my perfectly accurate posts just means that there is another puppy out there that is not getting the attention and cuddling that some forlorn Patently-O reader needs to give it.

            2. It really depends on your client’s strategy. To say that it should be this way or the other just removes your ability to see better courses of action for your client.

  8. There is a problem.If there is no “delay” restorations after an RCE is filed, the PTO can and probably will introduce all kinds of PTO delays in favor of FOAMs and the like. One might never see another action by the PTO in one’s lifetime. There is no reason at all for PTO management to waste any more time on them. Let them “rot.”The only remedy to this would be to file a continuation, which in fact will become common if the PTO begins delaying RCEs as I think they will.However reasonable the decision may be on its face, it is fundamentally flawed. Fundamentally — for the reason just stated. There is nothing that would prevent the PTO from all but permanently ignoring RCEs.

    1. If there is no “delay” restorations after an RCE is filed, the PTO can and probably will introduce all kinds of PTO delays in favor of FOAMs and the like.We’ve discussed this a bunch of times before. It doesn’t cost the PTO anything to give applicants PTA, so it’s not an incentive program that will ever change PTO behavior. All it does is reward applicants for what the PTO is already doing anyway.

      1. I’m not convinced. I think the PTO is measured by Congress and others in the administration on how much “restoration” is being accorded patents. Take a look at what Kappos did to RCEs already. He put them at the end of the line. Totally ignoring them is only a small additional step. And why not? This could allow another gratuity (bribe) to actually take them out of order. And who is not in favor of more money for the PTO. It seems a constant refrain among the movers and shakers.

        1. I think the PTO is measured by Congress and others in the administration on how much “restoration” is being accorded patents.I don’t think it’s near the top of the list. In part, that’s because even the squeakiest wheels who complain about “delay” and who have mastered the Fine Art of Appealing Everything know that they can control how fast their patents issue if it was actually important to them.who is not in favor of more money for the PTO.Um … mostly the same people who complain about the PTO taking too long to grant, e.g., their “automated” method of ranking PTO performance.All this talk of patent term reminds me, though: anybody know what’s going on with Gil Hyatt’s submarine patents?

          1. Ask and you shall receive – see the new thread (although it appears – as is quite typical – that you are not going to get quite what you asked for, as it appears that the Office and not Gil Hyatt has been blocking the processing).

      2. Someone is blocking my response.But if one’s performance is measured by amount of restoration, time to FAOM, or the like, then those things will be given priority over RCEs.

        1. You raise a good point Ned.There is the old expression of “you get what you measure.” If the PTO is measuring time until first Office Action (and holding that measurement up for the world to see as evidence that they have their sh t together), then there is little incentive to work on applications that have received RCEs. Instead, they have all the motivation in the world to get to the new cases, and hope that most applications in which a final office action is issued get an RCE — after which the USPTO can forget about them.

          1. Patent_Guru, we are going to need a statutory fix. May I suggest that the PTO be given a grace period of 6 months to complete prosecution until the next RCE, NOA or appeal. If they take longer, that is “delay.”What do you think?

            1. I have little faith in Congress, so I’m not counting on a statutory fix. That being said, the USPTO could return to their past practice in which RCEs stayed within the Examiner’s normal queue.

        2. if one’s performance is measured by amount of restoration, time to FAOM, or the like, then those things will be given priority over RCEs.Their “performance” isn’t being “measured”, they’re just associating a number with each patent that lets patentees sue people for longer. Nobody’s budget or raise or promotion at the PTO depends on that number, and it’s certainly not the only number people look at when they decide whether they’re happy with the PTO.Like I said, they can run the PTA numbers as high or as low as they want, and there’s no actual consequence to the PTO. They’re ignoring RCEs because people are complaining about first actions right now, and because they can. Giving PTA for post-RCE actions won’t change anything except people’s PTA.

      3. “We’ve discussed this a bunch of times before. It doesn’t cost the PTO anything”AND as we have discussed this a bunch of times before, the PTO delay also ties into the lack of examiner responsibility for a timely and good quality examination. Why hurry when you are rewarded for RCEs (the very real RCE gravy train, albeit modified by Kappos)? Why hurry when with publication happening anyway (and non-publication requests being underutilized), the government gets its Quo without giving any Quid? (add: and if the Quo be already obtained, why the H311 bother hurrying at all?)LOL – it’s as if all those Calvinball facespikes you have received over the years make it impossible for you to learn anything outside the bounds of your narrow pro-Infringers’ Rights script.(btw, real discussion involves listening, something you apparently lack the ability to do)add: LOL – another downvote for something that is entirely true and accurate. Somebody needs a puppy.

    2. Isn’t 35 USC 154(b)(1)(A)(ii) your “delay restoration after an RCE is filed”? PTA restarts accumulating after the Office does not respond to your RCE in 4 months, or do I misread the statute?

    3. “the PTO can and probably will introduce all kinds of PTO delays in favor of FOAMs and the like”Already happening (as noted) Ned.The deck chairs will be moving from the RCE deck to the Appeals deck.Let the games begin as next up will be a focus on those ev1l attorneys somehow gaming the appeals process…/eyeroll

    4. Yes, Ned, you do hit on a possible problem here: Question: what is there to stop the Office from simply (um, cough cough, unofficially of course) from simply permanently sitting on each and every RCE’d application? Answer: Not a d@m thing.It is easy to see that if the Office simply waits long enough, any application in the RCE queue can be stalled until no patent term is obtainable.Perhaps a better RCE decision would have been to still punish the Office for any of its delays (for example, must respond within four months) regardless of RCE status, and just remove any non-delay time period from the three year guarantee.Unfortunately, that better solution most likely would have entailed the court to act as a law writer.

      1. One reality is that the PTO does have some long-term reasons to support patent-term-adjustment. In particular, a substantial amount of its funding comes from the payment of maintenance fees, and patentees are less likely to pay the maintenance fees for patents with shorter terms.

        1. The deck chair lines are so long that it is quite easy to see the Office believing that removing one of those lines will have more benefit (e.g. by allowing it to focus on other queues) than any amount of possible detriment of the RCE queue expiring through Office inaction.Like I said, the better ruling (albeit possibly one not possible without rewriting the law – or perhaps finding an implicit reading) would have been to enforce all other Office delays in awarding PTA, regardless of RCE status.In other words, while your point is plausible, it is also deniable.add: I would also reject the premise because it smacks of “the only reason the Office grants patents is to collect the maintenance fees”add: There is an element of “it’s of no real concern to the Office” with the awarding of PTA. That’s because PTA is awarded at the end of the patent term, and the Public only sees that after the Office has taken the maximum payments from the patent holder. And given that that third payment is basicly pure gravy, there would exist some inherent desire to obtain that last payment. But it is a logical non-sequitur to associate a position on PTA based on that last payment because the two legal doctrines are not in fact causally linked. The Office has a desire for that third payment regardless of PTA status.

      1. Continuations and divisionals are now docketed alongside regular new cases, so RCEs are now on a docket all by themselves. We’re supposed to move (on average) one RCE every two biweeks, in addition to our other cases. There are some other changes coming soon that will require examiners who have stockpiled a lot of RCEs to work more heavily on them.

        1. Um we were just now shooting for 10 mo to first action, I’m not sure if we’re anywhere close to assuring 12 mo FAOM. If I recall correctly the budget wars had a part in this never occuring. Even though we weren’t hit as badly as some places we surely were not able to press forward with the initiatives necessary to get to the 12 (or 10) mo FAOM. That said, many of my cases get a 10 mo FAOM. But our AU’s in my area are already on top of our game.

                1. I’m sorry I can’t help you out but that information is publicly available. I’m not willing to put forth the effort to find it for you.

                2. Oh yes, because people aren’t willing to work for you for free they’re just “posting mindless crp”

                3. Your reply misses the mark by a mile.you introduced the topic, then could not back it up. My wanting you to back it up was not so much as wanting you to do homework for me as much as it was for you to make sure you know what you are talking about.Obviously, you do not feel constrained to post on what you know, but you feel free to say anything that ‘feels right’ to you. Hence: CRP again.

                4. In other words, you don’t want to discuss things you want people to “back them up” for you, i.e. do some work for you, for free. And to be clear, I possess the ability to back it up, send 100$ and I’ll do so.

                5. Not at all 6. I love to discuss things. But discuss things intelligently – not (like you) in simply making things up whole cloth that ‘sound good.’Reread my post – you are missing the point where I say that the backup work is not for me.

                6. I know you think the backup work is not for you. You’re a ta rd like that. I’m not here to back up my comments every time I make one, if you’re interested in the topic then you can look into it further yourself. If not, f right off, cause I’m sure as f not that interested.

                7. I don’t need to look into it. You, obviously, do.That’s the point.Preferably you look into it before you decide to post. That way, you wont engage in your typical character suicide by posting your own made-up-but-sounds-good-to-6 CRP.

                8. LOL – No 6, obviously you did not look close enough – that’s the entire point.Already did in the past…? – LOL sort of like the other thing you ‘did in the past’ only to have me expose you for the 1ie? Like that?Yep, exactly like that..Your first comment in this string stated that you could not recall but that ‘we heard.’ (emphasis added) Now, you are attempting to say that you in fact checked it out prior to posting.6, when you are caught in a 1ie, the first thing to do is to stop 1ying. .Sorry – 6, your history of character suicides just does not give you the benefit of the doubt that you ever knew what you were talking about. And this is evidenced by your not only never answering the initial question, but that you simply have not grasped why I asked the question in the first place. It really is pathetic just how clueless you are,

                9. Go d almighty, like at least half of your ta rd posts this all boils down to your not being able to comprehend what I was saying. They sent out information regarding this nonsense a long time ago. I read it and discussed it with others. I don’t have those papers in front of me and am not looking them up again. You should start to realize by now that whenever you think someone is “lying” on here, its just your ta rd brain not understanding w t f they’re saying because of your ta rdedness.

  9. TINLA IANYL,

    The student confidence information stated by IANAE was cited in “Waiting for Superman”, a new documentary about Education in America.

    Joe

  10. “cite or it didn’t happen”

    It’s in the new movie about run down schools “Waiting for Superman”. You can catch it at a theatre near you for awhile longer I imagine. They put the citation at the bottom of the screen iirc.

    But man o man are we in the lead in terms of confidence. We must have had like 20% over the 2nd best (which was sweden iirc).

    And really, can anyone not think of why those stats are how they are? It’s quite blatant to see what our culture values and what it doesn’t. What our women value and what they don’t. There is no wonder our children are excelling in the virtues that our society wishes them to have.

    If women wanted, and music touted, guys that could do a calc/chem/phys problem in their head then our math etc scores would shoot up into the stratosphere. And I’d have more women than I know what to do with, as if I didn’t already.

  11. “Please don’t feed the douchebag lulztroll.”

    What’s the oh-so-witty retort you use, sockie?

    Fxck off.

    Lulz

  12. In a recent study, American students scored very low among the industrialized world in every academic category, but the highest in confidence.

    cite or it didn’t happen

    In other news, I just realized that IANAE is Canadian. I feel quite confident of it.

  13. Academics, always quoting themselves.

    I don’t see how a study of grade school students constitutes “academics quoting themselves”. I don’t even know that any of the test subjects were quoted, and based on the results of the study it would be highly charitable to consider them “academics”.

  14. “In a recent study, American students scored very low among the industrialized world in every academic category, but the highest in confidence.”

    Academics, always quoting themselves.

    Lulz

  15. Perplexity at smart people being out of touch causing fear is itself perplexing.

    It’s not perplexing at all. I pointed out to a lawyer that he was exactly like the people he hates and insists are incompetent. What they call “perplexing” we humans call “cognitive dissonance”.

    What such threads remind me of is that good old saying about how the Big Man up in the Sky is always so very kind to St—d people.

    I always assumed that was pure reciprocity.

    Only problem is, they then go around bragging how much more intelligent they are than other people. Sigh.

    When the ability you’re self-assessing is the same one required to accurately self-assess, that’s a very common outcome. Look at people with no sense of humor.

    In a recent study, American students scored very low among the industrialized world in every academic category, but the highest in confidence.

  16. The only bragging I have seen here is IANAE and MaxDrei on IANAE’s behalf.

    I guess that is a problem.

  17. What such threads remind me of is that good old saying about how the Big Man up in the Sky is always so very kind to St—d people.

    He worked it out, you see, that they would get depressed if they were ever to realise how truly st—d they were.

    So, being so compassionate and all that, He made sure they never realised.

    Only problem is, they then go around bragging how much more intelligent they are than other people. Sigh.

  18. Perplexity at smart people being out of touch causing fear is itself perplexing.

    If you think an 1diot can cause inadvertent damage, think about how much damage someone with brains (but still dangerously clueless) can be.

    Be afraid. Be very afraid.

  19. Somebody finds IANAE “quite frightening”. I’m perplexed by that. Contributions that reveal intelligence, together with a thirst for reasonable debate, these I find the least frightening things on this blog.

  20. You’re assuming they could get the answer correct if they spent more time on it.

    Yes, but I’m assuming the same of examiners. Fair’s fair, right?

  21. It is quite frightening how (book) knowledgeable, yet out of touch with reality IANAE is.

  22. “If anything, that adds to their incentive to know which matters are worth more time and which can be done in less, and not to get the answer wrong if the reader is likely to check up on it.”

    Lulz

    You’re assuming they could get the answer correct if they spent more time on it.

    More lulz

    I thought examiners were “professionals” (after all, whom does the Patent Office Professional Association represent?). Shouldn’t they want to get the correct answer, regardless of whether the reader is likely to check up on it or not?

    More and more lulz

  23. Do you really think that’s how partners are compensated,

    Obviously not. Partners aren’t even “compensated”, exactly. They get a share of the profit, which means that they’re incentivized to squeeze as much productive work as possible out of the salaried employees for as little money as possible. Much like the PTO, or any other organization with a budget.

    or that associates bonuses (and changes in draw are not based on hours billed and realization percentage?

    Of course they are. But bonuses aren’t part of the basic salary model, and they generally require that the firm make a tidy profit, no matter how well the particular associate did.

    Examiners are also paid more if they “bill” more counts in the year, and their second non-finals are non-realizable time. If anything, that adds to their incentive to know which matters are worth more time and which can be done in less, and not to get the answer wrong if the reader is likely to check up on it.

    As a prep and pros attorney, I would gladly move entirely to a fixed fee arrangement, if it got me out of having to bill my time.

    That’s sort of what examiners get. They bill by the job, not by the hour. The real problem with being an associate is, as you said, that you get paid at a fixed rate but you still have to bill your time. If you got to bill one count per application you drafted, and some fractional count per office action response, you might find it more to your liking.

  24. Lawyers in law firms are salaried (not paid extra for harder cases or for spending more time per case), and they are also expected to manage their time such that more of it is spent on matters that justify it.

    Are you kidding? Do you really think that’s how partners are compensated, or that associates bonuses (and changes in draw are not based on hours billed and realization percentage? But I don’t suggest that Examiners move to an hourly billing type record keeping. What they have now is equivalent to a fixed fee arrangement. As a prep and pros attorney, I would gladly move entirely to a fixed fee arrangement, if it got me out of having to bill my time. Unfortunately, we wind up having to bill our time even for fixed fee cases.

  25. Every year I othertime off the amount of time that it takes me to do 4+ applications to do restrictions.

    Granted, but every time you (correctly) restrict the PTO gets a benefit, both from your reduced workload per count and from potential additional filing fees.

    All that “other time” is simply part of the PTO’s cost of doing business. Much like the security guard in a department store, who costs money but ultimately makes sure all the customers pay the correct price for whatever it is the store is selling.

    Now, if that other time isn’t taken into account when setting your production requirements for the year, that’s a whole other story.

  26. “Why is restriction costly to the PTO?”

    Every year I othertime off the amount of time that it takes me to do 4+ applications to do restrictions.

    The only thing I don’t understand is why the office doesn’t put into place EXTRA extra fees for applications with 20+ claims.

  27. You will clearly recall that “fee avoidance” was not the driver, but rather the illegal curtailment of patent rights in families of portfolios was the driver.

    1. What “illegal curtailment”? I presume you’re not referring to the claim and continuation limits that never actually came into force, because they never actually came into force.

    2. How can fee avoidance not be the driver, when this 3/20 business was common practice long before any “illegal curtailment”, the “illegal curtailment” doesn’t start at 20 claims, and every single graph shows that people draft to the 3/20 metric?

  28. - big cases get pushed down the list further, why examine a big case before its “oldest case date” when other counts are easier to get

    That’s unavoidable, no matter what the count system. Giving examiners more credit for more claims will have them cherry-picking the ones with a thousand pointless dependent claims, and leaving the ones with real added complexity to become “oldest”. Of course, all of this would be less of a problem if there were less of a backlog, because the examiner’s oldest case wouldn’t be as old and he’d get round to it quicker.

    restriction is very costly to both the Office and to applicants,

    Why is restriction costly to the PTO?

    Yes, it’s costly to applicants, but as long as only the appropriate cases are being restricted it’s hard to feel sorry for applicants who tried to claim two distinct inventions in a single application. They’re the ones who are really taking advantage of the system.

    - less time per claim for the claims that are most likely to be valuable

    If the applicant knows a claim is more likely to be valuable, he should file it in such a way that it gets the best examination. Assuming he even wants good examination. It might be more important for him to get more PTA by filing a bunch of worthless claims to make his application off-putting. But again, this advantage would evaporate if there were no backlog and even the oldest case got examined within 14 months and 3 years.

    Anyway, the PTO is ultimately responsible for examination quality. If it’s really necessary to hold the examiner’s hand and tell him how much time to spend on each individual case, or have a more stringent quality review process for applications with more claims, I would expect the PTO to take the appropriate measures.

    The flat-rate count system creates a lot of the problems we all deal with!

    It probably does, but any alternative system would also create its own lot of problems that we would all have to deal with. Applicants will always game the system on their end, and examiners will always game it on theirs. I would say the greatest benefits of such gaming, on both ends, result from the fact that examiners have so very many unexamined applications to choose from.

  29. At least then the “lie” should not be given.
    Why not?

    Seriously IANAE? Why not lie? Your disingenuousness is usually dressed less obviously.

    The “Lie” has nothing to do with examiners and management of their workload as you tend to lead astray (besides which, clearly, examiners simply are not given the same latitude as lawyers to manage their affairs – straw within straw). Being grown-ups has nothing to do with this.

    the very prevalent phenomenon of applicants reducing their claim count to 3/20 to avoid the fees

    You will clearly recall that “fee avoidance” was not the driver, but rather the illegal curtailment of patent rights in families of portfolios was the driver.

  30. IANAE – “There’s nothing wrong with paying examiners based on their average workload, as long as the average is reasonable. They’re grown-ups.”

    Unfortunately, examiners are grown-ups, and respond to their economic incentives just like anyone else would –

    – big cases get pushed down the list further, why examine a big case before its “oldest case date” when other counts are easier to get

    – the restricon can of worms – restriction is very costly to both the Office and to applicants, and only appears desirable becuase of the flat-rate count system. Scale the count system to complexity, and the restriction “can of worms” goes away.

    – less time per claim for the claims that are most likely to be valuable

    The flat-rate count system creates a lot of the problems we all deal with!

  31. At least then the “lie” should not be given.

    Why not? There’s nothing wrong with paying examiners based on their average workload, as long as the average is reasonable. They’re grown-ups. Can’t we trust them to manage their own time? Lawyers in law firms are salaried (not paid extra for harder cases or for spending more time per case), and they are also expected to manage their time such that more of it is spent on matters that justify it.

    Besides, the very prevalent phenomenon of applicants reducing their claim count to 3/20 to avoid the fees certainly lends credence to the self-fulfilling truth of the “lie”.

  32. Presumably the retroactive justification of all those extra fees would be their deterrent value.

    Presumably?

    Not likely. At least then the “lie” should not be given. Something about the constraints on the Office as to their ability to actually charge for actual work, not even approaching the being honest and truthful standard is in play here.

  33. “Now, maybe the examiners out there can answer this – does it really take that much longer to examine applications with a huge number of claims?”

    Well that depends. If their deps/extra inds are adding real substance as opposed to something that will almost necessarily be right in any art that addresses the first claim. If the former then yes, it does. And even if the later then yes, sometimes.

    “If you have lots of independent claims either they’re pretty similar or you restrict, right? ”

    Which is nothing but another can of worms.

    “How many claims does it really take before you need twice the time it would take to examine 20 claims?”

    Depends on the application and the subject matter. Oh, and how thorough you want the search to be.

    “Of course, that is the lie that is told. ”

    It isn’t really a lie… they just bamboozle the corps on the other end. Supposedly taking those things into account when coming up with the avg time. L u L z

    “the applicant does not receive “more examining resources” for the extra claim fees paid.”

    You say that, but you probably do. You’re just taking from some other poor sap. Sapplicant? lol.

  34. In truth, the applicant does not receive “more examining resources” for the extra claim fees paid.

    Presumably the retroactive justification of all those extra fees would be their deterrent value. Every single graph ever of claim count vs. anything shows a blip at 20 claims, even the ones above where there’s no reason to expect such a blip and anyway it should be in the opposite direction. Lots of people are limiting their claim counts because of the fees, and that means fewer claims per application to examine, which in turn gives examiners more time per claim.

    Now, maybe the examiners out there can answer this – does it really take that much longer to examine applications with a huge number of claims? If you have lots of independent claims either they’re pretty similar or you restrict, right? And if there’s a huge string of dependent claims, presumably you can reject nearly all of them by finding art for claim 53. How many claims does it really take before you need twice the time it would take to examine 20 claims?

  35. “Other than by recognizing that more claims means more work per count for examiners, why would we want or expect the PTO to treat applications differently merely because the applicant considers them more important? Or, in this case, because of an objective metric that we think correlates with the applicant considering them more important?”

    Applicants have been paying extra claim fees, and extra page fees since the end of 2004, on the theory that “more claims require more examining resources.” Of course, that is the lie that is told. In truth, the applicant does not receive “more examining resources” for the extra claim fees paid. So neither the applicants, nor the examiners, is getting what has been paid for. That has to stop.

  36. “Other than by recognizing that more claims means more work per count for examiners, why would we want or expect the PTO to treat applications differently merely because the applicant considers them more important? Or, in this case, because of an objective metric that we think correlates with the applicant considering them more important?

    Also, let’s face it, the guy who invents something in his garage and files an application in crayon with one claim probably considers his invention even more important than Pfizer does any of theirs.”

    Why, I’ll tell you why IANAE. It’s because Boundy is a douche.

    That’s why!

    I note that I have no problem with the office taking into consideration an applicant thinking an app is important, but determining it on random metrics is absurd. Just make a check box that says the app is important to them and they’d like to pay 2k$ in examination fees right off the bat. Give the examiner time and a half or 2x to do the case and wallah, it all works out.

  37. I have always been fascinated (and appalled) at the way the PTO’s compensation system, rules, petitions decision-making process, and the like fail to recognize this dominant fact.

    Other than by recognizing that more claims means more work per count for examiners, why would we want or expect the PTO to treat applications differently merely because the applicant considers them more important? Or, in this case, because of an objective metric that we think correlates with the applicant considering them more important?

    Also, let’s face it, the guy who invents something in his garage and files an application in crayon with one claim probably considers his invention even more important than Pfizer does any of theirs.

  38. Paul F. Morgan | Nov 21, 2010 at 01:47 PM hits the nail on the head —

    would not … patents with lots of claims be more likely to be … for applications considered more important …?

    You bet. I have always been fascinated (and appalled) at the way the PTO’s compensation system, rules, petitions decision-making process, and the like fail to recognize this dominant fact.

  39. Well done, Dennis.

    If your patent has at least one claim, it probably (72% or more) got PTA, and that PTA was more than one year. However as the backlog decreases (thank you Director Kappos!), those numbers should fall. To start setting expectations I’d like to see average PTA over time — maybe Dennis could show us average amount of PTA per patent per year.

    I am less interested in talking about what causes the PTA than to figure out how to take advantage of how the system seems to be working.

  40. I also wonder about the possible variables. For example, would not:
    patents with lots of claims be more likely to be subject to restrictions and divisionals?
    Or, be for applications considered more important and thus prosecuted more agressively?
    Would not patents with small numbers of claims be more likely to be for a higher percentage of simple inventions by individual inventors that also fall into PTO art units with smaller backlogs?

  41. The 20 is easily identifiable as belonging to the patent community reaction to the claims and continuation rules mandate.

    It is an arbitrary number, much like the arbitrariness of the despised rules.

  42. You might want to try the following:

    1. Throw out the ones with exactly 20 claims.
    2. Normalize the remaining patents by primary classification.
    3. Determine whether there is still a statistically significant correlation between number of claims and PTA.

    The reason I suggest this is because there’s a strong correlation between technology area and PTA. There’s not really one queue in the USPTO – there are dozens, generally one for each art unit or workgroup, and those are divided up by technology area.

Comments are closed.