Patent Pendency Time Series and Why Care about Prosecution Delays

By Dennis Crouch

In yesterday’s post, I provided a histogram of USPTO patent prosecution pendency for the most recent issued utility patents. I received a couple of e-mails asking for similar historic information. The chart above shows a time series of USPTO patent prosecution pendency for utility patents.

To be clear, this is not a complete dataset. Rather, to create the chart I pulled up the group of utility patents issued on the first Tuesday of September for each year 1999-2012. Then, for each group, I identified the median pendency as calculated from the patent application filing date to the issue date and ignoring any priority claims. The median pendency is typically more time consuming to identify than is the arithmetic average. However, I believe it provides a comparatively better sense of the data in this case. Prosecution pendency tends to have a substantial skew allows a small number of patents with exceedingly long pendencies to shift the averages. Relying on the median eliminates that difficulty. Because of this ever-present skew, the median is always somewhat smaller than the average – perhaps making the situation look rosier than reality. However, I’m comfortable with this result that largely ignores the top .5% of patent pendency because those tend to be quite special cases. For fun, I also overlaid the names of the USPTO directors in office at the various points in the timeline.

This chart is useful to me as a sign of hope. It wasn’t so long ago that the median pendency was hovering around two-years. And, all signs are that the pendency will drop over the next few years as thousands of new patent examiners find their footing. (This last bit about thousands of new patent examiners is intended to foreshadow a series of upcoming posts on the incredible rise in the number of patent examiners at the USPTO and an inquiry into what will happen with those examiners once the backlog is under control.)

= = = = =

Why should we care about patent pendency?: Reducing patent pendency has been a major goal of the Kappos directorship. However, it is probably useful to pause for a moment to consider whether we should care about pendency and backlog. Certainly we want to know and understand the delay in order to advise our clients on how to order their affairs. But, should we care whether the delay is relatively longer or shorter? In my view, the major harm of long delay is not felt by patent applicants, but rather by parties releasing new products who cannot rely upon parties who cannot rely on

Most of the backlog delay occurs between the time that the patent application is filed and the mailing of the first action on the merits (FAOM). From a patentee’s perspective, that delay can actually be good. It allows the patent applicant to delay payment of certain fees (such as issue fees) and costs (such as attorney fees for prosecution) and provides the applicant with additional time to consider whether or not to pursue rights based upon the additional expected costs of patenting. When taking market developments into account, the delay also provides the applicant with time to adjust claim scope to better capture the market value of the invention. One potential problem with delays in prosecution is a reduction in patent term. However, the Patent Act generously compensates patentees for any term lost due to PTO delays (by adding additional time to the end of the term). Sometimes applicants have good reasons to want quick patent issuance. For those instances, the USPTO allows the applicant to pay a fee in order to skip the backlog queue. The so-called “track one” fee is a hefty $4.8k, but it is an option and my pre-AIA survey found that charge not unreasonable. At least in a somewhat simplified world, this $4.8k limits the per-application loss to applicants caused by the delay. I.e., if an applicant was going to be harmed by more than $4.8k due to the lengthy backlog, then the applicant can simply pay the fee to avoid that harm. This is a simplified world because, inter alia, applicants might not know from the outset that there is any benefit to a more rapid patent issuance.

The real problem with the backlog is that the resulting prosecution delays create uncertainty for product developers and marketers – those that actually create new products and sell them on the market. The long pendency allows patent applicants to watch the market and shift patent rights to cover activity that was previously considered legitimately open. During that time, manufacturers simply cannot know whether their products will be covered by patents held by some third party. For many market areas, this greatly increases the risk that products legitimately released into the stream of commerce and placed in the hands of consumers will – some years later – become infringing because of third-party patents that eventually issue. Many of the policy justifications that support old statutory bar of 35 U.S.C. 102(b) would also discourage a system that allows this result.

141 thoughts on “Patent Pendency Time Series and Why Care about Prosecution Delays

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  2. I will grant you this, anon, despite the defense of lack of invention being “repealed” in 1836, the courts continued to recognize it as a defense to infringement even though not listed in the statutes.

    That is why it was codefied in ’52.

    That said, why would Frederico be so careful to include all recognized defenses in 282, but not inlcude all of them, and then, not even suggest that not all of them were included.

    I found this interesting about 103:

      The source of the requirement under the prior statute has been variously attributed. The opening clause of old R.S. 4886 which specified the classes of patentable subject matter (see section 101), began “Any person who has invented or discovered any new and useful art, machine, etc.” Two requirements may be found here: novelty (although novelty is further defines to referring to the conditions which defeat novelty), and utility (which condition is not further defined). The use of the word “invented” in this phrase has been asserted as the source of the third requirement under discussion. However, a different origin, with which the language and arrangement in the new code are in harmony, has also been stated. This is that the requirement originally was an extension of the statutory requirement for novelty. Expressions such as “patentable novelty” and “patentable difference over the prior art” have been often used as synonyms, and the problem involved is in fact an assessment of the quantum or quality of the novelty present. The famous “doorknob case” in the Supreme Court, Hotchkiss v. Greenwood, 52 U.S. (Dec. term, 1850), is usually cited as the first case to make requirement. It is commonly stated that this case involved the question of invention in making a doorknob from clay or porcelain, but this was not the actual question involved, and the decision of the court plainly implies that if the patentee had been the first to make a doorknob of clay or porcelain there would have been no question as to the validity of the patent involved. The actual facts were that doorknobs made of clay or porcelain were old and that doorknobs made with a certain shaped hole for attachment of the shank, but made of metal, were also old; the doorknob of the patent had the old shape of the metal doorknob and was made of clay or porcelain, the old material for making other doorknobs. There would be very little question today as to the unpatentability of a device with such a difference over the prior art. The Supreme Court, with a dissenting opinion, found the patent invalid as involving no more “ingenuity and skill” than possessed by “an ordinary mechanic acquainted with the business.” Although other language is also used, one quotation from the decision is significant, “No one will pretend that a machine, made, in whole or in part, or materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one; or, in the sense of the patent law, can entitle the manufacturer to a patent.” This would place the matter on the basis of novelty, the new machine cannot be distinguished from the old, hence it is the same, and is not novel in the sense of the patent law. Even before the date of this decision, expressions such as essentially anticipated, not essentially new, substantially alike, and not materially new, are found in some decisions.
  3. Except, anon, I have quoted, a number of times, Supreme Court authority to the contrary: US v. Americal Bell Telephone.

    Next, we have the recent Federal Cir. case to the contray as well. If the statutory defense is not listed in 282, the patent is valid.

  4. Props as due:

    These defenses were not exhaustive and the reason for enumerating them was obscure.

    This should shut the door on the attempted reading of 282 as exclusive (as vry early inthat discussion I noted that other avenuess were not foreclosed).

  5. Mr. Palmer, I don’t think that 102(c) has anything to do with prosecution latches. I think it has to do with abandoning the invention by putting it on the shelf forgetting about it.

    On the other hand, Pennock v. Dialogue did discuss the theory that the inventor abandoned his invention to the public by commercially exploiting it prior to filing a patent application. I think the law has come to recognize that this is not a form of abandonment of the invention, but rather a form of concealing it while exploiting it.

    102(c) was put into 102 by Frederico 1952, when Frederico rewrote RS 4920 into §282.

    Frederico, Commentary on the New Patent Act,link to ipmall.info

      The second paragraph of section 282 is derived from the first paragraph of old R.S. 4920 [section 69 of former Title 35, U.S.C.A.] which enumerated five specific defenses. These defenses were not exhaustive and the reason for enumerating them was obscure. The first of the old stated defenses was “That for the purpose of deceiving the public the description and specification filed by the patentee in the Patent Office was made to contain less than the whole truth relative to his invention or discovery, or more than is necessary to produce the desired effect.” This has been omitted. Since intention to deceive the public was an element of this defense it was seldom raised; failure to give a description of the invention as required by section 112 is a defense without regard to intention. The second defense stated in the old statute was “That he [the patentee] had surreptitiously or unjustly obtained the patent for that which was in fact invented by another, who was using reasonable diligence in adapting and perfecting the same.” The interpretation of this phrase is what led to the rule of diligence in determining priority of invention which has been incorporated in section 102(g). The third and fifth defenses are conditions for patentability stated in section 102(b) and (c) and the fourth defense in modified form is also included in the conditions for patentability.
  6. But you know that the AIA abolishes laches. No more 102(c). OTOH, whether that will stop judges from applying it from the common law remains to be seen.

  7. On second thought I’m glad the voodoo doll isn’t working. That was pure gold. An excellent blueprint for how the office can increase production (which seems to be the only thing it cares about).

    The mention of “kwic” supports my ongoing suspicion that Full House might be one of the bitter and pretentious examiners who posts on another blog. If not though, those two should meet for lunch.

  8. One does not go in the boiler room and start beating the engine with a hammer in order to plug the hole gushing water beside you.

    I don’t think this is the best analogy as there is more than one problem to deal with. I think a better analogy is fending off alligators while draining the swamp. Focusing on either the alligators or the swamp exclusively will not solve the problem.

    The best way forward is to realize what you can control legally (learn the Tafas lesson), and focus on quality examination. Reject what should be rejected and do so soundly and allow what should be allowed. Sounds simple right? Yet it took Kappos making an official announcement that quality does not equal Reject to stop the reject-reject-reject mentality (or at least start ending that beast and it’s inertia) that ran rampant under the Dudas regime.

    And if you want to talk about deck chairs, then you hit on exactly why the Office was so h3llbent on the Continuation Rules package – instead of the hard but necessary work of actually examining applications, the Office wanted to reject its way out of the backlog. But guess what? When you reject with a crrppy Office Action, applicants will continue fighting for what they believe they have a right to. Repeat the same (or make a worse) rejection and the deck chair moves from regular prosecution to RCE or Appeal.

    And 6, the limited (but at least a start) reconfiguration of the RCE process by Kappos was also a step in the right direction – a bit of draining the swamp.

  9. OK, to paraphrase to make sure I understand what you are saying:

    It is a bogus argument to say that keeping a continuation alive is wrong.

    This applies for whatever reason (i.e. removing limitations or adding limitations). If you have the “stuff” in your original application (fully, properly and legally), and you have a legitimate alive continuation (not a CIP, just to keep things clean), it is perfectly legal, honest and legitimate to be able to draft new claims (fully supported) to cover emerging products on the market, and you have not engaged in any wrongful delay (take laches off the table) and have honestly moved the application forward in prosecution – I would agree completely. I would also point out to those unwilling to learn that the US does in fact have a mechanisim in place to outlaw the introduction of new matter (of course, CIP is outside of this point). I would also add that a chain of such honest continuations is fully legitimate to have, as long as each is legally created and lawfully pursued.

  10. anon, I was commenting on the earlier comment that keeping a continuation pending to adapt claims to cover new products, generally by broadening them such as by removing unnecessary limitations, was illegitimate.   Given that the Supreme Court has held that it is not illegitimate and gives one two years to file such broader claims, I would hope we would hear less of such bogus arguments.

  11. Not seeing what exactly is “bogus” to your post Ned.

    Not saying I’m disagreeing or agreeing, I really have no idea what you are trying to say.

  12. Dennis,

    The median pendency is typically more time consuming to identify than is the arithmetic average.

    I wonder how you went about this. It sounds like if you tried to compute a histogram of sorts.

    My trick: just sort your data set in ascending order, and pick the element in the middle. A good sorting algorithm (e.g. Quicksort) will provide the sought result in O(n log n).

    In the case of an even number of data points, you could either arbitrarily pick one of the two points in the middle, or average them.

    The sorted set is analogous to a cumulative data distribution, with the ordinal of the point with a given value representing the number of points in the set less than or equal than that value. You can estimate other percentiles just as easily as the median.

    Did you try to eliminate or differentiate in your data set CIPs, continuations, divisionals, and/or foreign priorities? How about final rejections? Do these take more time?

    I once did a similar exercise with EPO applications, and I remember seeing a long and thin tail.

  13. Agreed.

    If they have a continuation pending, then it seems they can legitimately adapt their claims to your product and have two years to do so after your previously non infringing product has been introduced. This “legitimately open” argument is completely bogus. Completely.

    Even if they do not have a continuation pending, they still have the right to file a broadening reissue within two years to claim previously unclaimed subject matter. This is just another reason the argument is bogus.

    Only when there are no broadening reissues or continuation pending can one “reliably” tread on unclaimed territory.

    Of course, there does remain an alternative to “uncertainty.” One can obtain a license.

  14. “Every action has an equal and opposite reaction”.

    I see you are an optimist. In my experience the opposite reaction is normally larger and more vigorous than the original action…..

  15. No, thank you, Max. I thought your earlier comment (you know, the one with the error that anon was kind enough to “correct”) was very helpful. From experience I know a little about claim construction in Europe and perhaps more than I would like to about amendments in the EPO, but I don’t think I’ve heard an explanation as helpful as yours before (even with its flaws). It’s good to be able to put both practices in context.

  16. Ya ive got everything good idea that should have been in patent reform that instead was corruptly and intentionally left out by our bought off backwards legislators now we have patent system shutdown concerning major significant invention instead of a perfected system Now the top 200 yearly patents are going into the black hole of non conception. Vote out incumbants and start over immediately on reform is the best was to prosperitys return

  17. Thanks Leopold. As you might imagine, 30 years of the Protocol have brought increasing convergence between the courts of the different Member States.

    The first few years after 1978 were real Wild West stuff. But then the infringement judges of the EPC Member States started to huddle, at cosy (gemuetlich, you could even say)biennial conference/moots, and the rate of convergence increased markedly.

    Randall Rader CJ is always coming over here. I wonder why. He enjoys the craic I would guess.

  18. The EPO does patentability, but can’t do infringement. It has zero experience of deciding whether or not a particular claim covers any particular accused embodiment. It is scrupulous in never commenting or offering a view on matters of “scope of protection”. Mind you, it does closely observe how its patents are litigated, in the national courts of the EPO Member States.

    The counterpart to EPO fussiness about prosecution amendments is district court arm-wavyness when it comes to the issue whether or not the accused infringer has unlawfully impinged upon the scope of protection of the claim issued by the EPO, a scope decided exclusively by the court trying the infringement action. Just imagine what might happen, for example, when a German and a French company go head to head, and litigate their infringement issue in the courts of i) France ii) Germany and iii) UK.

    So, you see, the EPO feels able to be picky without doing injustice. It remains confident that, if Applicant has a good invention, the courts will give him fair scope of protection (even if the claim is worded somewhat infelicitously). With this pickiness, clearance opinions based on WO docs can be more confident. There, the EPO doing its bit for investment in innovation, and for legal certainty.

  19. never really moving a conversation forward

    I’ve disagreed plenty with MD over the years but I don’t recall those conversations with him veering off into the hinterlands as yours seem to do quite regularly.

    you share the same trait

    Hmm.

  20. So much to learn.

    I agree. Perhaps we can start on this voyage together, by reading the Protocol on the Interpretation of Article 69 EPC as Max suggested. I did, and found it to be very interesting.

  21. Gee, anon, this truly is educational. I would be surprised if Max isn’t really learning anything.

    Now, which “EP verbatim practice” are you referring to? And what does that have to do with claim construction after a patent issues?

  22. on your own admission, European claim construction is a mystery to you.

    Actually, what is a mystery to me is your choice of language and what you mean by “halfway house between.” Since what you mean and what you say sometimes don’t match, I just wanted to understand you. Is the halfway house between a full merging of the two systems? A selected partial merging (and if so what elements from which doctrine survive and which elements are expressly voided)? So much to learn.

  23. Bad luck? Not at all. Your “playing” is not required. Although I do hope you learn from the correction.

    The logic of the EP verbatim practice is easy enough to see and validates the logic of the correction. This is an instance where form over substance may actually be more prudent.

  24. Anon, on your own admission, European claim construction is a mystery to you. But you don’t let that get in the way of your urge to change my text on that particular topic, and then triumphantly announce “Corrected”.

    You really think I’m going to write more, so you can announce yet another triumphant “correction”. Bad luck. I’m not playing.

  25. It’s clearly not MaxDrei’s “sensitivity” that is the problem.

    You are correct MM – it’s his refusal to engage when confronted with facts/law that shoots holes in his views, and then compounds that by endlessly repeating the same challenged propositions (thus never really moving a conversation forward).

    Funny that, you share the same trait.

  26. Multi-lingual Europe has no alternative than to go for the letter, not the substance.

    Corrected. The admitted lingusitic limitations are forcing the verbatim treatment – that’s the form, rather than the nuanced and actual understanding – that’s the substance.

    Although I would like to hear more of the half way house between peripheral and central claiming. How exactly is that done?

  27. Two thoughts on that not unusual take on EPO behaviour, JJ.

    Claim construction after issue. Multi-lingual Europe has no alternative than to go for the substance, not the letter. Nuances of the English language are completely lost on mainland Europe. Besides, the EPC (Protocol on Art 69 EPC) decrees a half way house between English peripheral claim drafting and German central claiming. Central claiming? Claim the best mode and your friendly local infringement judge will decide whether the accused embodiment is close enough to infringe. So, suppose the invention is the golf green. The English claim defines the periphery, whereas the German claim defines where the hole is. So does Europe have a Doctrine of Equivalents? You bet it does.

    So no wonder they get exasperated with English-speaking lawyers arguing over nuances.

    Prosecution strictness? Keep in mind that hardly anybody at the EPO has English as first language. Mostly they have their own as first language, and the three EPO official languages all as non-native languages. So now imagine you are examining at the Chinese Patent Office and the Applicant is swearing blind that his prosecution amendment, in Chinese, with no verbatim support in the app as filed, is completely free of any taint of new matter. Would you accept his blandishments unhesitatingly? I wouldn’t. Nor do EPO Examiners. But it’s different in all the other Patent Offices of the world, where everybody involved in the process is working in their first language so well able to judge whether non-verbatim amendments do or do not add matter.

  28. If you take my comments as patronizing, I’m sorry that you are so sensitive

    It’s clearly not MaxDrei’s “sensitivity” that is the problem.

  29. I have to agree with the poster who was critical of the EP divisional rule. To me the EP examiners were doing a good enough job of rejecting EP “divisionals” on Art. 123(2) grounds that the rule seemed unnecessary. From what I understand, the burden in overcoming an Art. 123(2) rejection is very high, and is almost always unsuccessful, e.g. at oral proceedings. There didn’t appear to be a backlog issue that prompted the rule, so the rationale for it just doesn’t seem to exist. But their system is much different than ours so I guess they can do what they feel they need to do.

    I do miss the reasonableness of EPO examiners on inventive step and PSA. They simply put the U.S. examiners to shame in that area. But the pedantic nature of EPO practice was really tiresome to me.

  30. Ah AAA, I see. Thanks. That might explain then the current EPO rule, that whenever you amend you have to take the Examiner to the exact place in the app as filed where the verbatim text of the amendment can be found, or else suffer the fate that the amendment is not admitted.

    I agree with you, to bundle into the description the text of the 85 claims not presented to the EPO as claims. That’s good advice. Now that you don’t have to pay for translation of the entire specification at EPO grant (unless you go off validating in the little countries) it doesn’t matter how long your specification is. The main thing is verbatim support, in the application as filed, for the claims you want to take to issue.

  31. Filing divisionals at the EPO is brutally expensive, what with all those accumulated annuities. People do it only if there is budget for it and when there is merit in it.

    Or if you are a King (watch out for the “sport of Kings” tendency).

    Also, I fail to see how the work is useful work. The only difference between one patent with a number of claims duly searched and allowed versus a number of patents with the same number of claims duly searched and allowed is the fees (and paper shuffling). Hint: the end product content is the same.

    If you take my comments as patronizing, I’m sorry that you are so sensitive. But just putting out facts seems to escape your notice (or concern).

  32. When filing in Europe, we would take the U.S. claims and select 15, and include multiple dependencies. Any claims in excess of 15 we would add to the summary as “other embodiments” or “other aspects.” For a U.S. application that would have 100+ claims, that made the summary rather long. Our European associates told us that when examining our amendments, that were supported by the EP application as originally filed thanks to the summary, for added subject matter, the EPO examiners expressed frustration at having to review a lengthy summary for compliance with Art. 123(2).

    Given the vigilant enforcement of Art. 123(2) by the EPO, I highly recommend that any U.S. applicant choosing to file in the EPO claiming priority to their U.S. prov/non-prov write a lot of claims and insert them into the summary of their EP app. Or at the very least take whatever claims don’t fit under the (effective) 15 claim EPO limit and put them in the summary.

  33. Anon, thanks for giving me the opportunity to write more on this interesting subject.

    There is a slew of reasons why Applicants at the EPO are currently finding that they need to file more divisionals, not just the 24 month rule. There is for example the much greater opportunity EPO Examiners now have, to decline to examine amended claims because their subject matter is “not searched”.

    Filing divisionals at the EPO is brutally expensive, what with all those accumulated annuities. People do it only if there is budget for it and when there is merit in it.

    And there is budget when the div serves a useful purpose. Sure, any div will “make work” but that work is useful work, not churning. I’m sceptical of the notion that people today file divs at the EPO “just in case”.

    I used to think that any international patent family worth watching typically has one or two members in each country but 12 to 20 in the USA, but I learn from these columns that, more recently, that just isn’t so.

    We need to make judgements in relation to what applicants do today, not what they did 5 or 10 years ago.

    Now your turn to think up another “hint” (of what you fancy has escaped me) that you can patronisingly bestow on me.

  34. “. It caused the examiners to have to review very long summaries for added subject matter determinations.”

    Blink. What’s that then. News to me. Care to say more?

  35. Jim do you agree with me that:

    1. In certain technical fields (think: stents) there are a few notorious Hydra-head examples of cascades of divisionals (running to around 6 generations) all claiming much the same thing, all issuing and all getting opposed, to the extent of the Dutch Court shouting “Get out of my court and don’t come back till you’ve got one of your opposed Generation-n divisional patents past an EPO Board of Appeal”.

    2. But the all-enveloping new EPO 24 month rule on divisionals is a disproportionate response. EPO strictness on prosecution amendments means that you know from the original WO publication what divisional claims are gettable, so let him file his div whenever he likes.

    3. But the 24 month rule is nevertheless handy within Government circles, where the EPO President can reassure critical international audiences in government circles that at his EPO his new rule has “fixed” the problem.

    4. And the upflow of new EPO divisionals is handy too. When EPO Pres. sits down to haggle with Mr K, JPO-san and Mr SIPO, he has in front of him a pile that is not as diminutive as it might otherwise have been, a bigger number of new filings than he might otherwise have had.

  36. There was a similar reaction to this in the EPO when they imposed their drastically higher claim fees. Applicants started stuffing their summaries with lots of disclosure that could be turned into claims if their original 15 were rejected. It caused the examiners to have to review very long summaries for added subject matter determinations.

    Every action has an equal and opposite reaction.

  37. AAAARGH! I doubt you can find many European practitioners who think the divisional rules are a good thing. The change in rules has been a complete disaster.

    The divisional filing rate has increased [by 50% or more according to some EP statistics], as the “use-it-or-lose-it” mentality means that more divisional applications are being filed on a precautionary basis.

    While this may be good for the EPO in the short term [for fee income], it represents “make-work” liable to clog up the system and divert examiner resources.

    Admittedly the problem is not as great as in the US, where restriction practice generally results in more applications being required to cover an idea than is required in Europe, but it is a self-inflicted and unnecessary wound.

  38. Most patent families have little value, and ought to be shut down early.
    I average 4 or 5 continuations per case that I file. When fending off patents of others, likewise, I am often faced with numerous continuations (4 or more). It might be hard to quantify, or correlate, but when patentees think their patents are valuable, and the industry seems to agree, the number of continuations grows.

    Check out 20070015998, which is the 13th continuation of a fairly valuable patent family (unique in that it was filed, and subject to an office action, after the 20 year expiry).

    Did you already study the typical number of continuations?

  39. More LOL.

    By the way, I can’t find where you did it, but thanks for the tip on that recent prosecution laches case. That’s a good one. Application filed March 1973, patent finally issues in November 1991. We get a summary judgment denial in August 2012 – 39.5 years after filing.

  40. AAA, I suggest your read Webster and its earlier companion case, Woodbridge.  The intervening rights are the patents and products of others.  Given the publication of patent applications, I suggest this should extend to them as well, especially if you claim the invention.

    That published patent application or product starts a clock running.  Two years hence, if the problem patentee has yet not filed a broadening reissue or broader or more specific claims in a continuation, then you only have to deal with claims that are issued or on file.

    Now here is a twist:  why don't we consider filing such references, intervening rights references, against late claims in the PTO and see what happens, especially if we cite the Supreme Court cases and Symbol.

     

  41. “Oh, and btw, until he actually gets spes to make the shtty examiners who are producing the COPA cases…”

    Lulz. Those “shtty examiners who are producing the COPA cases” are the next SPE’s. Don’t you see that? How long you been there? You get to be SPE by cranking out 120% cr#p. You don’t get to be SPE by diligently working through your docket in date order. It’s called cherry picking. You may have heard of it.

    Here’s an idea: Do some cherry picking of your own. Get your production up to 120+% for a couple years in a row. Get a do-nothing, know-nothing SPE job where you can sign any OA that’s put in front of you without reading it as long as every claim is rejected, and if the junior wants to allow a claim tell them to go back and do more searching. Frequently mention to anybody in earshot how hard you’re working.

    Rinse.

    Repeat.

  42. So if my competitor introduces a new product and I wait one year and 364 days to present a claim in a continuation to cover that product, I’m clear?

    “…we follow in that respect the analogy furnished by the patent reissue cases.” Intervening rights that arise as a result of a reissue are different than “intervening rights” that theoretically arise as a result of continuation/divisional applications, are they not. I see my competitors patent issue. No continuation or divisional filed. I think my design around the claims puts me in the clear. Two years later my competitor files a reissue. I have intervening rights. But in the case where I know my competitor has a continuation or divisional pending, how do I know I’m in the clear? Why am I entitled to assume that my competitor won’t file a claim that covers my design around?

  43. You indicated that you could not see any suggestion of something and I provided it to you.

    Unless the USPTO has a legal right to operate a remote force field that is blinding me with respect to this particular issue, I still think you’re trying way, way, way too hard to find “implicit” baloney to argue with.

  44. Also, AAA, since my clients have been victims of Lemelson, I found it objectionable that the PTO never seemed to take notice that the claims Lemelson was first promulgating in the '70s and 80s were covering subject matter long practiced by the public at the time he first filed them.  

  45. “Spes are directly responsible for the COPA situation”

    Truer words were never spoken. They could very easily replace every SPE in the place with a vending machine. Load up every app in the backlog by filing date, dispense one at a time, and when the examiner has issued a FAOM on the one case they are examining, issue them a new token/coin/slug and let them turn the handle and get a new case. Why the PTO is paying GS-15 salaries for a function that could be fully automated in about 15 minutes is simply indefensible.

  46. AAA, I think you have two years, although this is equity and with equity, anything is possible.

    Regarding scope, I think what is critical is that the claims one already had did not cover the new products.  Broader or narrower is not exactly the right issue.

  47. “The long pendency allows patent applicants to watch the market and shift patent rights to cover activity that was previously considered legitimately open. During that time, manufacturers simply cannot know whether their products will be covered by patents held by some third party.”

    Uhm, there’s this “new” thing called PAIR. It allows you to see the status of any pending application or issued patent, including whether it has any continuations or divisionals pending. You can find issued patents and pending applications in the Official Gazzette every Tuesday and Thursday, respectively. They publish them. It’s a cornucopia of information.

  48. That’s good to know, but there is still the problem of law firms and investors who dare to demand a profit for their work and risk.

    If any of y’all would like to sue a few companies on a contingent basis for injunctions, let me know.

  49. So presumably if I’m not filing “broader” claims after two years, those cases don’t apply? If I’m writing picture claims to cover very specific competitor products, as long as my claims are not broader than what I originally got, I’m clear of prosecution laches?

  50. See the recent (August 23, 2012) decision from the USDC SDNY in Koninklijke Philips v. Cinram Int’l.

    Here’s a golden oldie too to remind us all of Lemelson:

    link to patenthawk.com

    “the stuff lurking in file histories never ceases to amaze me.”

    I hear ya.

  51. Seriously MM?

    Do you think your post at 3:24 does anything? You indicated that you could not see any suggestion of something and I provided it to you. There is nothing implicit about the post I provided. And all you can do is pile on more nonsense.

    Professor Crouch, another prisoner is dead.

    How many more?

  52. Paul, I think the issue is simple. The SC has held, and the Federal Circuit followed the SC cases in Symbol, that in the presence of intervening rights (public or private, public being the patent of another disclosing the invention), one has two years to file broader claims to cover that subject matter.

    What I don’t see out of the PTO is any search for intervening public or private rights in cases involving clearly late claims.

  53. As to a suggestion, see the post by
    DC on Sep 10, 2012 at 11:13 (repeated here for your convenience – emphasis added):

    Dennis,
    Unless the PTO outlaws continuations, the

    Oh, I get it. It’s one of those “implicit” messages that you receive through your fillings. I thought Dennis was trying to tell us that “C3PO intercepted the Regal Destiny communications” but what he was actually saying was that “the USPTO has the legal right to outlaw continuations.”

    Thanks so much for the correction.

  54. Was the patent ever enforced?

    Not yet, as far as I know. Just some warning shots. Per Aristocrat, the PTO’s improper revival is not a defense, so I was investigating prosecution laches as a possible alternative; hence my interest in this topic.

    While the bulk of my practice is prep and pros, I occasionally do some validity analysis – the stuff lurking in file histories never ceases to amaze me.

  55. AAA JJ,

    You have mistaken the intent of MM’s post, which was merely to troll me.

    MM,

    As to a suggestion, see the post by
    DC on Sep 10, 2012 at 11:13 (repeated here for your convenience – emphasis added):

    Dennis,
    Unless the PTO outlaws continuations, the harm you see will not be addressed by faster prosecution in any one case. It’s a well-known part of the game to keep a continuation open to address emergent technologies, and that does not require much in the way of drawn out prosecution to get out to ten years and still have a continuation pending.

    You are welcome.

  56. Webster Co. v. Splitdorf Co., 264 US 463 – Supreme Court 1924

    “The original bill was filed in 1915; and claims 7 and 8 were brought into the suit by a supplemental bill filed October 25, 1918.

    “It will thus be seen that claims 7 and 8 were for the first time presented to the Patent Office, by an amendment to a divisional application eight years and four months after the filing of the original application, five years after the date of the original Podlesak patent, disclosing the subject matter, and three years after the commencement of the present suit.

    “The repeated assertion of interferences in narrower terms, resulting in delays incident to their determination, affords no just excuse for the failure to assert the broader claims, 7 and 8, at an earlier date. The subject matter of these claims is not of such complicated character that it might not have been readily described in the original application or in one of the subsequent applications — in 1915, for example, — as it was described in 1918; and the long delay of Kane and his assignee in coming to the point tends strongly to confirm the view that the final determination to do so was an exigent afterthought, rather than a logical development of the original application. We have no hesitation in saying that the delay was unreasonable, and, under the circumstances shown by the record, constitutes laches, by which the petitioner lost whatever rights it might otherwise have been entitled to. ”

    “Our conclusion, therefore, is that in cases involving laches, equitable estoppel or intervening private or public rights, the two-year time limit prima facie applies to divisional applications and can only be avoided by proof of special circumstances justifying a longer delay. In other words, we follow in that respect the analogy furnished by the patent reissue cases.

  57. Sorry, I’m not a fountain of case cites and quotes. Maybe somebody else can chime in. I recall reading at least one case where the issue was addressed.

    Your example is amusing. Was the patent ever enforced?

  58. And why ignore priority claims? Surely the priority period is relevant in assessing the effect of long pendency?

    Looking to the data set you use I see, for example, US8260113 issued September 4th 2012 on an application that is a divisional of a divisional of a continuation of an application filed Nov. 16, 1992.

    Nearly 20 years from filing of the root application looks very bad. Still, the patent issued with a 1375 day term adjustment – good for the patentee, bad for third parties.

  59. “1. It has a super long IDS”

    So? Examiners don’t rely on the art cited in IDS’s. Lemley proved that.

    “2. It has super long claims,…”

    Great. They pass the pencil test. Allow them. What’s the problem?

    …a huge amount of claims or requires a ten way species restriction that the idi ot first examiner could not even dream of accomplishing correctly so he never wanted to do the case.”

    Ten way species. Lulz. Search and examine the generic claims, do the usual examiner hand waving BS rejections (e.g. Official Notice, lack of criticality, lack of unexpected results, design choice, etc.) on the rest and move on. How hard is that?

    “3. It belongs to an art for which there is no good classification because our classification system is 40 years behind the times.”

    More lulz. Do the usual cr#ppy text search, cut and paste the highlighted kwic sections together in your OA generating tool and you’re done.

    “4. The claims are complete horsesht from a 101 perspective and nobody who has an inkling about the law wants to deal with that.”

    Insert the usual “The claims are to software, which are unpatentable under 101 per se” nonsense that most examiners use. Not that tough to do.

    “5. The claims are nearly unreadable after having been drafted by someone from a foreign country.”

    If you can’t read “Japlish” or “Chinglish” after as many years as you’ve been an examiner and after as many cases you’ve had to examine in those “languages” then maybe you’re just too d#mb. Find something else to do.

    “6. The case is simply very very complex.”

    Bonus lulz. I thought you were the king of finding knock out prior art with a five second Google search? Don’t tell us you’re slipping.

    BWWWAAAAHHHHHAAAAAHHHHHAAAAA!!!!!!!!!!!

  60. The courts have discussed whether filing a continuation to draft claims to cover a competitor’s later developed technology is a “valid excuse” and they have answered in the affirmative.

    Example, please? I’m not arguing with you; I’d like to read it.

    I evaluated a patent for a client a while back that had been abandoned for over 6 years, as I recall, and then revived so that the patentee could pursue very general claims for a technology that had become pretty widespread in the meantime. The petition to revive said that the abandonment was unavoidable because the patentee had more important business priorities during that period, which consumed his available time and money. In other words, the abandonment was unavoidable because the abandonment was intentional. Petition granted.

  61. Callistus, indeed i4i had a product, but critically, at the time a lawsuit, they were out of business and the only asset left was the patent.  It was held by a trustee, if I recall correctly.  This is the usual pattern what we call today, an NPE.  The patents come from a failed startup, and the patents are the only asset left.

    I think the critical factor was not that the patent owner was trying to protect a product market in that case, but that Microsoft was a willful infringer.

  62. “The issue within the PTO may be this: Is filing continuations or other delaying tactics in the PTO where the purpose is to be able change the claims to cover later actual products of others a sufficiently valid excuse to prevent the PTO from issuing and enforcing threats of application rejections for prosecution laches?”

    The courts have discussed whether filing a continuation to draft claims to cover a competitor’s later developed technology is a “valid excuse” and they have answered in the affirmative.

    “I think not…”

    You’re wrong. But that’s okay.

    “…but the PTO still seem afraid to issue such rejections…”

    I don’t think they’re “afraid” to issue such rejections. I think they know that carrying their burden on a such a rejection can’t be met in many (most?) of the cases you seem concerned with. Maybe they think 112, 1st written description rejections are a better approach. I’m pretty sure that’s what’s going on in Katz’s applications.

  63. Prosecution laches is a fairly limited doctrine. It’s not going to apply against applicants and patentees that are diligently filing and prosecuting their continuations.

    I know many (e.g. 6, Mr. Toupin, and the rest of the chuckleheads in the PTO) love to prattle on and on about the PTO’s “inherent authority” discussed in Bogese, but Bogese’s facts are rather extreme and the number of instances where the precedent would apply is going to be very low, if any at all.

  64. i4i had a product. They pitched it to MSFT and MSFT refused it opting instead to build their own. I don’t know if i4i had customers beyond that.

    I suppose there may be a case that could ask for and get an injunction, but that also takes investment. What law firm would take a case if the payment is a percentage of an injunction? What investor is going to put up the money to fight it out for an injunction is there is no monetary return?

  65. Oops, I forgot, actually trying to get people to be accountable for their positions will only earn you a “shut up” and let’s move forward.

  66. We should ask Perry Saidman. He was there

    I have found that Perry, like a great many “consistent moniker users” tends to disappear when difficult counter points or questions are put to them.

    Go figure, as isn’t non-consistent moniker usage the greatest bane to discussion (as in actual dialogues)?

    /off well-meaning sarcasm

  67. posters seem to think the Office has the legal right to limit continuations.

    I didn’t see any suggestion of that, but the Office does have that right through the application of the prosecution laches doctrine.

  68. Practitioners should be aware, however, that it isn’t a foolproof strategy, nor is it guaranteed that a court won’t later find your patent unenforceable because of the delay.

    Great advice, Leo.

  69. Thanks for pointing that out, anon. You are correct that Bogese did not present new/modified claims in a continuation. Bogese filed 11 continuations without amendments, the 11th after a warning, and then tried to amend. The Board of Appeals ended up sustaining both the “forfeiture” rejections and the examiner’s art rejections on the amended claims.

    As it is supposed to, the CAFC refrained from deciding a case different from the one before it, so it did not tell us whether the results would have been different if Bogese had instead responded to the warning with another continuation, containing the amended claims. But I’m not sure I would recommend that strategy either.

    In any case, I’m not trying to litigate a case here. My point was (and remains) that while “keeping a continuation alive” is a viable strategy, practitioners should not assume that it is foolproof.

    We should ask Perry Saidman. He was there.

  70. Including the right to present new/modified claims in a continuation

    That is precisely not in the fact pattern of In re Bogese. I think some of that “I wish that were law” is seeping in…

  71. Gittin’ yo’ counters for doing the job incorrectly, and then gittin’ no counts for having to redo it correctly ain’t exactly “paying for it.” Trust me.

  72. The immediately above comments raise the interesting question of the extent or scope of the two CAFC Lemelson decisions confirming the existence of “prosecution laches”, at least as an equitable patent defense, notwithstanding J. Newman’s more recent panel decision seriously emasculating this principle by requiring proof of damages from the delay.
    Futhermore, the PTO, as any other agency, also has inherent power and responsibility to control its docket to prevent excessive unexcused dalays.
    The issue within the PTO may be this: Is filing continuations or other delaying tactics in the PTO where the purpose is to be able change the claims to cover later actual products of others a sufficiently valid excuse to prevent the PTO from issuing and enforcing threats of application rejections for prosecution laches? I think not, but the PTO still seem afraid to issue such rejections even for old “submarine” applications kept pending by numerous delays for many years, with broad claims, such as some Hyatt applications, which will create patents lasting 17 additional years.

  73. However, the notion of the prosecution strategy of keeping a continuation alive is very distinguishable from the facts of In re Bogese, would you not agree?

    I’m not sure precisely what you mean, anon, since Bogese involved the filing of 11 or 12 successive continuations, apparently for no reason other than to keep the case alive, but I think we’re in agreement. My point was simply that the PTO has some power to cut off delaying strategies, including the right to present new/modified claims in a continuation, if the delays are unreasonable and if the PTO gives the application fair notice and procedural protections. Bogese was an extreme example, of course.

    Your reference to Tafas is well taken, however. The PTO tried to rely on Bogese in defense of their rules. But there’s clearly a difference between a hard (and arbitrary) continuation-limiting rule and the case-specific determination that prosecution laches requires.

    In any case, if you can figure out a way to keep continuations going for 20 years, while making substantive progress the whole time, then go for it. The speed and quality of the examination process today makes this an easier strategy than it ought to be.

    Practitioners should be aware, however, that it isn’t a foolproof strategy, nor is it guaranteed that a court won’t later find your patent unenforceable because of the delay. Cancer Research v. Barr Labs, while it reversed a holding of unenforceability, is instructive. If the delays are unreasonable, unexplained, AND cause prejudice, prosecution laches might well bar enforcement.

  74. A few modern computers

    Any computer (modern or otherwise) makes a fine paperweight without the apt components of good software programs.

    Given the iron law of nature (otherwise known as the Program Management Triangle, amongst other names), it is a good thing that we promote innovation that drives efficiency to levels unimaginable not more than one hundred years ago.

    It’s precisely that type of innovation (amongst others, of course) that the fruits of a patent system enable.

  75. If it’s a situation analogous to Bogese, the PTO can rely on that precedent. But if you’re filing continuations and advancing them diligently, then Bogese doesn’t apply. If your client is in a technology that is seeing active development, there’s plenty of competitor products to try to cover with your continuations. All you have to do is pay attention.

  76. Yes. I’ve notified several. I would expect that most individual inventors are guys like me. I want to build a company based on my patents. That was the goal and is the goal now.

    The last thing I want to do is scour through a market filled with hundreds of infringers putting together technical comparisons day after day just so some contingency law firm can sue them for pennies on the dollar.

    Injunction? – not after ebay, and it takes a product, which takes investment. That problem is already discussed.

    Unfortunately, that is the hand dealt by pendency at the PTO. I think it’s senseless to file patents as an individual inventor.

  77. Thanks Leopold, you make a good point.

    Yes, there are tangents that the Office can control as exemplified in In re Bogese. Non-substantive delaying tactics are a poor strategy.

    However, the notion of the prosecution strategy of keeping a continuation alive is very distinguishable from the facts of In re Bogese, would you not agree?

  78. Leopold,

    Do you remember Tafas?

    That’s twice now on this thread that posters seem to think the Office has the legal right to limit continuations.

    Maybe I’ll just shut up…

  79. “Just look at the Dudas regime’s upward slope to a huge backlog increase on this chart,”

    Plot that vs the number of additional apps filed during that time and it is all perfectly understandable. Trust me, Kappos is finally coming around to knowing that long term the filing rate needs to be trimmed while the no. of examiners increases. Did you see the new fees and the elasticity report over at watchdog just this week? There were some proposals that resulted in -5% apps filed iirc. Just exactly what I said would have been accomplished by the old C and C rules, and what needed to be done back in the day.

    “But Kappos cannot do that much about the “sht.. examiners” you complain about having to work-salvage, due to civil service and union restraints.”

    Sure he can, he doesn’t have to fire them, all he has to do is make the managers manage them.

  80. “I don’t see the overall increase in the backlog in the data above.”

    It isn’t in the data above. We haven’t seen an increase in the backlog of unexamined apps because as you well know we’ve been shifting the cases other places.

    It doesn’t matter, the backlog is the backlog is the backlog. I’m not just talking about the backlog of completely untouched cases.

    And, even if I were, sans COPA but with the effects of the shifting, then the backlog would be even smaller than it is today. COPA, admittedly by its sponsors, sacrifices non-examining time in order to get the old cases done. In effect, it is just them coping out and giving people more time to do the oldest (and notably wors t/shtiest) cases outside their area under the guise of a “learning curve”.

    I have done some 20+ copa apps at least. Every last one of them is an outlier “ba d” case for at least one reason, usually more.

    1. It has a super long IDS
    2. It has super long claims, a huge amount of claims or requires a ten way species restriction that the idi ot first examiner could not even dream of accomplishing correctly so he never wanted to do the case.
    3. It belongs to an art for which there is no good classification because our classification system is 40 years behind the times.
    4. The claims are complete horsesht from a 101 perspective and nobody who has an inkling about the law wants to deal with that.
    5. The claims are nearly unreadable after having been drafted by someone from a foreign country.
    6. The case is simply very very complex.

    Without fail one of those applies to every copa case I’ve ever done.

    So, K man knows what it takes to get examiners excit about doing a case, extra time. He simply needed a way to get a temporary increase in time for these cases to get them moved. Wallah! A “learning curve”.

    Note that all this is to avoid making his managers actually manage examiners.

    And don’t try to cop out that union/civil service rules stop managers from managing what cases the examiners work on. Spe’s have that control. If it boils down to it they can simply not docket them new cases until they get the older ones done. Spes are directly responsible for the COPA situation and Kappos should have gone there to correct the situation first.

    And even if there is some bizarro union rule against spes being managers then fine, POPA is willing to work with management on pretty much everything. He could have worked that out just as well as he did the new count system.

    I do well recognize the latency effect, but that does not overrule what he is doing to try to combat the pendency which either found him or was left to him. One does not go in the boiler room and start beating the engine with a hammer in order to plug the hole gushing water beside you.

    Oh, and btw, until he actually gets spes to make the shtty examiners who are producing the COPA cases that have to be taken by other examiners to do their own work then the COPA is a temporary bandaid and as soon as we stop doing it then the situation goes back to normal pendency (i.e. up).

  81. Maybe I wasn’t clear. There’s two simple parts.

    Part one:
    Long pendency at the PTO allows major enterprise software companies to steal IP and embed it into their already existing systems so that it can be sold to their already existing customer base.

    Part two:
    If you’re not independently wealthy, building a company requires a lot of money and, without other assets, a patent is required to attract investment.

    If the market becomes saturated with large tech companies, no investor will throw money at a new company even if they own the patents.

    The inventor becomes a patent troll.

    Long pendency very much harms inventors in enterprise software.

  82. Why care about prosecution delays? Many reasons immediate novelty check is the first thing to do before the evidence of origial conceptions slips into a quagmire of corrupt patent thickets to steal the patent starts. Inventor protection from pirate intimidation startups is criticl to inventor survivability Disallowing pirate startups is critical to incentive to create. Non issued status is a detriment to startups who need colaterol for loans. Classifying patents by there value then pre issuing the most valuable first to those who want immediate issuance only. Also certifying patent app. value even in initial disclousure filings for those where startups are trying to get loans to complete hiring for technical perfection non provisional filings.

  83. Hopefully prosecution laches kicks in well before 20 years. The PTO can get the ball rolling, without waiting for a district court, I believe.

  84. Webster Co. v. Splitdorf Co., 264 US 463 – Supreme Court 1924

    Paul, the SC there held that a broadened claims were late if filed two years after the subject matter of those claim was described in another’s patent. Two years was based on the statutory bar period. That is now one year and will soon be reduced to zero. The SC made clear, the doctrine was broadly applicable to intervening rights of any kind.

    A prohibition on late claiming seems to be the law, but for some reason, the PTO does not recognize that law.

    Why doesn’t it follow the law?

  85. Exactly. And even if there is no written description, in the filing docs filed on the filing date relied upon, of the “same” invention as that of the new claim. Only in America.

    Everywhere else, that is to say, anywhere where a First to File writ runs, you only get the priority of an earler filing date when you claim the “same” invention as you apply for, on that earlier date. “First to File” means “First to File for that specific subject matter”.

    It’s one of those differences that makes the US patents system, for the time being at least, uniquely “strong”.

  86. For any important technology, keep a continuation pending for the entire twenty years and you can file any claim that is supported, enabled, novel, non-obvious, and clear and definite whenever you need it.

  87. How should we pay examiners, that is the question.

    Hiawatha said, the brave that shoots the most arrows should be paid the most. (Who cares if they hit the target?)

    Karl Marx replied, each examiner should be paid the same, unto each according to his needs, he intoned.

    Dudas explained to Hiawatha, but if hitting the target is all that counts…

    Dudas explained to Marx, if everyone is paid the same, both quality and quantity will go to minimal levels.

    Hitting the target is what counts and what should be rewarded.

  88. Should we consider,

    Webster Co. v. Splitdorf Co., 264 US 463 – Supreme Court 1924 link to scholar.google.com

    “It will thus be seen that claims 7 and 8 were for the first time presented to the Patent Office, by an amendment to a divisional application eight years and four months after the filing of the original application, five years after the date of the original Podlesak patent, disclosing the subject matter, and three years after the commencement of the present suit. A comparison of these claims, as set forth in the patent, with the claims in the original application, to say the least, leaves in doubt the question whether they were not so materially enlarged as to preclude their allowance on the original application. Railway Co. v. Sayles, 97 U.S. 554, 563; Hobbs v. Beach, 180 U.S. 383, 396; Dunham v. Dennison Manufacturing Co., 154 U.S. 103, 110; Michigan Cent. R. Co. v. Consolidated Car-Heating Co., 67 Fed. 121, 126. But this aside, the evidence establishes to our satisfaction that Kane did not originally intend to assert these amended claims, because he considered their subject matter one merely of design and not of invention; and the inference is fully warranted that the intention to do so was not entertained prior to 1918. During all of this time their subject matter was disclosed and in general use; and Kane and his assignee, so far as claims 7 and 8 are concerned, simply stood by and awaited developments. We are not here dealing, therefore, with the simple case of a division of a single application for several independent inventions, Patent Office Rules 41 and 42; Bennet v. Fowler, 8 Wall. 445, 448; American Laundry Machinery Co. v. Prosperity Co., Inc., 295 Fed. 819, but with a case of unreasonable delay and neglect on the part of the applicant and his assignee in bringing forward claims broader than those 466*466 originally sought. The repeated assertion of interferences in narrower terms, resulting in delays incident to their determination, affords no just excuse for the failure to assert the broader claims, 7 and 8, at an earlier date. The subject matter of these claims is not of such complicated character that it might not have been readily described in the original application or in one of the subsequent applications — in 1915, for example, — as it was described in 1918; and the long delay of Kane and his assignee in coming to the point tends strongly to confirm the view that the final determination to do so was an exigent afterthought, rather than a logical development of the original application. We have no hesitation in saying that the delay was unreasonable, and, under the circumstances shown by the record, constitutes laches, by which the petitioner lost whatever rights it might otherwise have been entitled to.

    We do not overlook the importance of not applying so narrowly the patent law as to discourage the inventor from exercising his creative genius, or the manufacturer or capitalist from assisting in the necessary work of bringing the invention into beneficial use; but it is no less important that the law shall not be so loosely construed and enforced as to subvert its limitations, and bring about an undue extension of the patent monopoly against private and public rights.

    “Our conclusion, therefore, is that in cases involving laches, equitable estoppel or intervening private or public rights, the two-year time limit prima facie applies to divisional applications and can only be avoided by proof of special circumstances justifying a longer delay. In other words, we follow in that respect the analogy furnished by the patent reissue cases.”

    Cf: Cancer Research Technology v. Barr Laboratories, 625 F. 3d 724 – Court of Appeals, Federal Circuit at 730 link to scholar.google.com

  89. Oops, when I cited K-Tec I think I mis-spoke. Is it K-Tec or is it another recent case that I have in mind, that cites back to the Liebel case?

  90. PTO prosecution in the USA offers too much scope for Applicants to improve their positions after their filing dates, to (for example) capture the launched products of competitors by amending their claims to fit. Liebel, K-Tec are just the tip of the iceberg.

    This is my impression as well, MD, based on many years of prosecuting in both jurisdictions. Mind you, it’s not uniform across the examination corp. But there is a far greater percentage of examiners in the US who are more willing to let unsupported (or very poorly supported) amendments through the gate (or they are simply clueless or careless) relative to the situation at the EPO.

  91. Right.

    There is a iron law of nature, a trade off between quality, speed and cost.

    Given a constant budget, one can only reduce the backlog by sacrificing quality; or increase it by increasing quality.

  92. Answers? Yes and Yes.

    My view? A problem is perceived in the USA, that one cannot predict what claims will issue, and so there is legal uncertainty, and so there is more difficulty persuading investors in manufacturing innovation to invest. No such problem is perceived in Europe (where there are quite other reasons that explain the paucity of investment in new manufacturing).

    I offered one explanation, that PTO prosecution in the USA offers too much scope for Applicants to improve their positions after their filing dates, to (for example) capture the launched products of competitors by amending their claims to fit. Liebel, K-Tec are just the tip of the iceberg. Like a good boy and a cautious investor, you do your duly diligent clearance study, and then find that despite all that, covetous claims have duly issued, with a high presumption of validity, and are being asserted against you. They might not have any enhanced scope of protection by virtue of any Doctrine of equivalents but, heck, if they cover the product literally, so what.

    You might disagree. Fine. Tell me about it. I’m here to learn aren’t I?

  93. Would it be fair to say that you are implying that the PTO does not have a strict rule about adding subject matter?

    I suppose “strict” is a relative term, and there may arise a discussion on how “strict” the term “strict” should be.

    Are you also implying that a drafter of a clearance opinion cannot predict with a high level of confidence what valid claims might emerge from a US application, (even granting that US examination employs a Broadest Reasonable Interpretation doctrine explicitly so that a high level of confidence emerges from the process)?

    After all, the US does have a “strict” rule against adding subject matter.

    I am just trying to understand your view.

  94. I agree, that uncertainty and backlog are not linked. Beginning in just the last few years, the EPO gives priority to search reports on newly filed applications. Armed with that search report, and knowing the EPO’s strict rules about adding subject matter, the drafter of a clearance opinion can predict with a high level of confidence what valid claims might emerge in the end in Europe, however many years thereafter the cascade of successive divisionals keeps on flowing in to the PTO.

  95. The enterprise software business turns fast because large software companies can simply include a new technology in upgrades to their existing customer base. A new company has to overcome that competitive advantage with legitimacy and strong patent protection.

    The delay is highly damaging to small tech companies. Customers will not buy a software product critical to the internal operations unless it is from a legitimate supplier – a solid product, a seasoned management team and financial backing.

    When a new technology is invented, a lot of money needs to be spent to legitimize the company. To get that, investors are needed.

    A patent application is worthless to an investor while it is pending for the same reasons – nobody knows what will be protected until it is allowed.

    It took seven years to get my fist patent allowed and during that time the market turned on my inventions and now over $50B in market infringes.

    The same investors then told me that the risk is too high to warrant an investment after the patent was issued because the market is flooded by largest software companies on the planet.

    Pendency creates patent trolls.

    I have one more (not yet infringed that I believe is the next stage of the market) sitting at the PTO for almost ten years with no way to know when it will be allowed. I’m a troll now and probably will be again.

  96. The real problem with the backlog is that the resulting prosecution delays create uncertainty for product developers and marketers – those that actually create new products and sell them on the market.

    That uncertainty is not inherent to the backlog and, absent other changes, will continue to exist even if the giant backlog completely disappears (which will never happen in the US absent major changes in continuation/divisional rules such as those implemented in the EP).

    Rather, the uncertainty is inherent to the lack of consistent examination quality at the patent office. Faster examination will only increase the inconsistency and therefore the uncertainty. It’s entirely possible that a rapidly shrinking backlog will result in greater uncertainty for all players, although greater uncertainty than exists now seems almost impossible to imagine given the poor quality of the patents granted at record levels by the USPTO every week.

  97. Paul, “riduculously broad” to mean means “functional,” an old bug-a-boo of mine.

    I also think one should conduct a clearance study not on what someone claims, but on what he could claim. If he discloses what I intend to do, then there is an obvious problem.

    Still, claims are “supposed” to inform the public, and if they do not, or can be made late, then we do have a problem that seems entirely contrary to the purpose for claims in the first place.

  98. …and of course, the calculations for timing (especially average timing) should properly reflect RCEs as not new applications.

  99. Pay to play inherently favors large entities that can better afford a system built for kings.

    Also, the default that aligns with First to File is FIFO.

    Notwithstanding these two things, how about a Pay for Not Play now? – an option that an applicant can pay to defer examination and move to the back of the line (of course, any such option would need appropriate safeties such as suspension or stoppage of patent term adjustment).

  100. I think that is correct that the harm won’t be solved by reducing the backlog. However, it does move incrementally in the right direction especially because the vast majority of patent families are not “kept alive” beyond one continuation.

  101. Dennis,
    Unless the PTO outlaws continuations, the harm you see will not be addressed by faster prosecution in any one case. It’s a well-known part of the game to keep a continuation open to address emergent technologies, and that does not require much in the way of drawn out prosecution to get out to ten years and still have a continuation pending.

  102. I find it hard to believe you that you have never even heard of the Dudas/Toupin [neither even being patent attorneys] regime’s promotion of rejecting applications almost automatically [especially by non-SPE's] as an alleged “quality improvement program”?
    Just look at the Dudas regime’s upward slope to a huge backlog increase on this chart, and meanwhile really old “submarine” applications continued unsurfaced until we finally got a PTO director who was a real, competent, and hard working patent attorney. But Kappos cannot do that much about the “sht.. examiners” you complain about having to work-salvage, due to civil service and union restraints.

  103. This last bit about thousands of new patent examiners is intended to foreshadow a series of upcoming posts on the incredible rise in the number of patent examiners at the USPTO and an inquiry into what will happen with those examiners once the backlog is under control.)

    Which is going to be when? 2020?

  104. and which causes an overall increase in the backlog (for undeniable reasons I won’t go into).

    1) I don’t see the overall increase in the backlog in the data above. Are you adding the backog in other areas of the Office (such as appeals and RCE’s?)

    2) I hope you recognize the latency effect. Not that Kappos is a god or anything, but Dudas was intent on running the ship into the ground, and anyone who has any real world experience realizes that an organization’s inertia cannot be abruptly stopped. It takes time to turn a massive ship around (especially a government entity massive ship).

    That said, I agree that a complete picture including all the buckets (and yes, including the hidden quality control not-quite-appeals land bucket) would be a far better indicator of the state of the Office.

  105. and which causes an overall increase in the backlog (for undeniable reasons I won’t go into).

    1) I don’t see the overall increase in the backlog in the data above. Are you adding the backog in other areas of the Office (such as appeals and RCE’s?)

    2) I hope you recognize the latency effect. Not that Kappos is a god or anything, but Dudas was intent on running the ship into the ground, and anyone who has any real world experience realizes that an organization’s inertia cannot be abruptly stopped. It takes time to turn a massive ship around (especially a government entity massive ship).

    That said, I agree that a complete picture including all the buckets (and yes, including the hidden quality control not-quite-appeals land bucket) would be a far better indicator of the state of the Office.

    Lastly, I would be interested in your cloaked statement: it’s hard to give any credence to “undeniable” when that “undeniable” is unknown.

  106. Dennis,

    Although I agree with your statement “the major harm of long delay is not felt by patent applicants, but rather by parties releasing new products who cannot rely upon parties who cannot rely on,” I would also like you to consider that some business units, e.g., pharmaceuticals, are hesitant to invest the significant amount of capital and opportunity costs needed to advance a drug product when only a patent application is on file. The thought is if there is any uncertainty that the company won’t get a patent on the drug product/formulation/MOT etc., then my ROI must be based on data exclusivities alone. Typically, the 3 or 5 years of data exclusivity is insufficient for a positive ROI. Thus, the length of pendency impacts whether these business decision makers will make the investment to advance the drug. This is why composition of matter patents are “more valuable” than other pharmaceutical-type patents. There is the perception that there is more certainty that one with be granted a composition of matter patent over say, a formulation.

    I am not sure how this analysis compares to the computer/semiconductor industry and would be interested to hear opinions of people in those fields.

  107. Professor Crouch,

    It would be intersting to overlay and compare the data above with the number of applications and the number of examiners.

  108. I agree with Dennis that a “real problem with the backlog ..[is that it creates].. uncertainty for product developers and marketers ..[because].. during that time, manufacturers simply cannot know whether their products will be covered by patents held by some third party.”
    This problem will be somewhat worse under the AIA because of its elimination of the 102(g) defense. But a serious aggrevation of this problem is the fact that so many patent applications are now filed without any prior art sea and thus rediculously broad claims, so that searching the unexamined claims of published applications filed that way is ineffective, as those published claims bear little relation to issued patent claims, much less valid claims, even for companies that spend all the money for such continuing searchs. [Which is nearly impossible for hi-tech products with many different features.]

  109. Indeed it would be Chaine.

    However, I do not believe that to be the case. I heard no tales of the previous admins implementing any programs to lessen the pendancy. Other than the creation of “date goals”. If you can call that a program. If I had to guess, that would just be a statistical anomoly. As you saw, K man had a big ol huge increase and he was specifically focused on this.

    And to all those Kappos fans out there, where is your Kappos god who can do no wrong now? He’s had 3 years and a specific program (COPA) just for this, which examiners struggle to adapt to and which causes an overall increase in the backlog (for undeniable reasons I won’t go into). All for pretty much nothing other than making the good examiners take care of the shtty examiners ga rbage cases and getting back to the status quo we had under Dudas.

    Practicioners who truly want pendency to go down should be outraged by the shifting of the deck chairs going on all while nothing is done down in the boiler room where the gaping hole is.

  110. Most of the backlog delay occurs between the time that the patent application is filed and the mailing of the first action on the merits (FAOM).

    Feel free to apologize at your convenience “Huh?”

  111. The first step in each regime is lower, except for Kappos.

    Perhaps because Kappos preferred to take his lumps at the beginning…

  112. One of the more subtle problems with a long delay to the first action is that it reduces the likelihood that the person who drafted the application will be available to prosecute it.

  113. Very interesting. I wonder why for each of Dickinson, Rogan, and Dudas the pendency went down slightly the first year and then increased–maybe each instituted a different process for reducing pendency that initially got the low-hanging fruit under the previous system but then succumbed to the inevitable pressure of people figuring out how to maximize their own benefit under the new process?? It would be interesting to hear the perspective of an examiner who had been there for each transition.

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