Old Applications; New Patents

By Dennis Crouch

Patent applications filed on or after June 8, 1995 have a term of twenty years from the date of application filing. The prior rule offered a term of seventeen years from the issue date. This change was part of the Uruguay Round Agreements Act (URAA) that harmonized US law with that of other countries and also helped to substantially move away from the problem of patent application sandbagging / submarining where patent applicants intentionally delayed prosecution in order to accrue additional end-stage patent term. That problem has arisen again, although to a lesser extent, with the generous patent term adjustment offered for delays in prosecution.

Although the change-over was almost twenty-years ago, there are still a number of pre-URAA patents pending at the PTO. When they issue, these patents have the benefit of having 17-more years of patent term remaining. For some fundamental technologies whose market has blossomed over the past two decades, that potential value is enormous. According to the PTO, there are now 450 of these old applications still pending at the USPTO. That is down from about 600 three years ago.

The chart below shows the number of pre-URAA patents issued each year for the past decade.

The twenty pre-URAA patents issued in 2013 are owned by only seven different entities, and twelve of them are owned by Personalized Media Communications.

  • BAE Systems: 8,576,108 (active expendable decoy to fool enemy missiles);
  • Children's Medical Center: 8,597,910 (DNA encoding Von Willebrand Factor Proteins);
  • Colgate-Palmolive: 8,535,730 (tarter control toothpaste);
  • Genentech, Inc.: 8,357,513; 8,399,250; 8,557,768 (genes and methods relating to the human mpl ligand polypeptide);
  • Institut Pasteur: 8,507,196 (A kit for determining the absence of HIV-1 RNA in a biological sample);
  • Personalized Media Communications: 8,395,707; 8,558,950; 8,572,671; 8,584,162; 8,587,720; 8,607,296; 8,559,635; 8,566,868; 8,601,528; 8,555,310; 8,613,034; 8,621,547 (programmable TV remote control);
  • ZymoGenetrics: 8,603,777 (Genetically modified cells that produce human Factor IX).

 I recently wrote about the Gil Hyatt case that involves several patent applications filed in the 1970s and an additional handful of applications pending since the mid 1990s. The PTO has not issued a Hyatt patent since 1997. 

41 thoughts on “Old Applications; New Patents

  1. As an attempt to inject a sense of perspective into this “problem”, consider the following. (1) The patent system is an entitlement program that primarily benefits already wealthy; (2) the number of applications represented here is an incredibly microscopic percentage of the number of applications examined by the PTO in a timely manner over the same period; (3) the number of applications represented here is similary dwarfed by the number of patents improperly granted by the PTO, which negatively impact the rights of everyone in the country.In short, this is a “problem” for the patent system and for the public in the same way that it’s a “problem” when a shipment of government inspected beef gets lost on the way to McDonald’s. But of course there will be disproportionate attention placed on the problem by those people whose primary goal is to make it as difficult as possible for the USPTO to reject their applications.

    1. Malcolm’s “sense of perspective:” Change the subject and QQ some more.Now who could have figured that one out?/eyerollAlso – how do you even get to “whose primary goal is to make it as difficult as possible for the USPTO to reject their applications”? What does that even mean?

  2. The rule that a continuation invokes the 20-year from filing term is the cause of the problem we see here. Let me explain.From the 2012 Supreme Court Hyatt case: 1995 application, 117 claims, 38 allowed, rest rejected: 112(1); claims for benefit extending to 1980 or before.Now, in ordinary prosecution, the applicant would take the 38 allowed and continue the discussion of the balance in a continuation. That is not possible with a pre-20 year from filing date application for obvious reasons, the continuation application will have “expired” on filing if the parent was filed more than 20 years old.So long as Hyatt, or for that matter, any other similarly situated applicant has this problem, applications with allowed claims will continue to be prosecuted because of the disallowed claims. The applicant has no realistic alternative.Perhaps we need special legislation to help. Permit the pending pre-1995 applicants to file continuations without invoking the 20-year from filing rule. This will permit the allowed claims to issue while the prosecution of the disallowed claims continues.

    1. How about just make a rule that no patent term shall be extended beyond 30 years of the application filing date without particular congressional approval.

      1. That would not address the Office sitting on anything it does not ‘like’ indefinitely.What is not being addressed is the action of the Office, or rather, the inaction. Isn’t that after all, the crux of the problem here?

      2. You do recognized that the problem was caused by non grandfathering in pending applications to the old rules? The objective was Lemelson. But it hit innocent folks as well that must keep allowed claims pending because they cannot file continuations. Congress created the mess.

        1. it hit innocent folks as wellHyatt’s invalid claims hit a lot of innocent folks, too, to the tune of hundreds of millions of dollars.Just a friendly reminder: the USPTO is human beings and therefore will make mistakes. Millions more innocent people are “impacted” by USPTO mistakes every Tuesday. And a lot of those “mistakes” are best characterized as “intentional” or “grossly negligent.”And the people who are burdened by those weekly mistakes are nearly always people who are less able to shoulder that burden than the people who file patent applications knowing (hoping) that the USPTO will not be able to competently examine them.

          1. 6, the problem that Hyatt faces is caused by Congress, not by Hyatt.Until congress changed the rules, Hyatt could have taken allowed claims and filed a continuation as to disallowed claims. One might legitimately argue that not doing this but delaying the issuance of allowed claims truly was submarine practice. But that is not what Hyatt is doing when to file a continuation operates as an automatic abandonment of the disallowed claims by reason of their earlier priority date.The problem is directly caused by bad legislation, legislation intending to stop Lemelson, but which affected a lot of folks who had early priority dates. No longer could they take allowed claims and file a continuation. That option was stripped from them by congress.If we really want to get those pending, allowed claims to issue, we have to stop the penalty imposed by filing a continuation. We have to undo the damage caused by the Lemelson fix.

      3. Dennis: I don’t trust Congress to do anything right; they carved out an entire non-infringement exception for their favorite industry (banking) based on enough $$ going their way. I”m ok with it being appealable to an Article III court.

  3. Slight modification to the post above. The 450 pre-URAA applications still pending do not include those that are under secrecy orders.

  4. I dare say that there are a lot more than the few “dozen” Hyatt applications still pending mentioned here. I’d hazzard a guess that the vast majority of those 450 are his based on what I have heard about the number he filed back in 94-95. Just based on things I have heard, but…

  5. A number of these ancient applications are presumably by Gilbert Hyatt that had been appealed in 35 USC 145 Civil Actions in the D.C.D.C. from Board rejections. Hence, has not their PTO application secrecy has been waived by filing a District Court action? Thus If the Solicitors Office attorneys defending these lawsuits wanted to do their best possible job to protect the public interest why would they not have publicly posted these claims to seek prior art thereon from the public as part of their diligent discovery obligations?

      1. The entire record below from the PTO and the very subject matter of this kind of suit? How did the Fed. Cir. get to make the public disclosures about these applications that I quoted above from Hyatt v. Dudas, (Fed. Cir. 2008)? Dennis?

  6. Looking at the prosecution history (on Public PAIR, so I don’t accidentally look up and blab about any private info) of the oldest of those patents to Personalized Media Communications, there was some mention of an agreement between PMC and the USPTO, seemingly related to PMC filing large numbers of very large applications (500+ pages) with complicated continuity chains. Some of the delays in prosecution dealt with re-exams on related cases or were otherwise related to that agreement. It would be interesting to see just what the nature of that agreement was.

    1. Personalized Media Communications: 8,395,707; 8,558,950; 8,572,671; 8,584,162; 8,587,720; 8,607,296; 8,559,635; 8,566,868; 8,601,528; 8,555,310; 8,613,034; 8,621,547 (programmable TV remote control);I haven’t yet looked at the claims. They must be something to be behold. Controls … for a machine! Buttons that cause things to happen when you press them. Signals passing through space …Does this PMC company make stuff or do they just file patents?

      1. “Does this PMC company make stuff or do they just file patents?”Do you think that matters for the principles of patent law under discussion? Why?(LOL _ a downvote because I dare ask someone to connect their QQ to a legal principle……LOVE IT)

  7. From the fascinating article posted recently on this blog about the latest Gilbert Hyatt suit, plus his other prior litigation against the PTO, we know he has a number of these 450 very old pending applications, and that litigation must have contributed to some of the delays. E.g., Kappos v. Hyatt which went all the way to the Sup. Ct. The decision in Hyatt v. Dudas, (Fed. Cir. 2008) publicly exposed thatliterally thousands moreof his “submarine” claims are still pending in at least a dozen patentapplications with priority dates to the early 1980’s “orbefore”. The decision states that it “..concerns thepatentability of approximately 2,400 claims in twelve related patentapplications..” and also notes that “..all twelve [Hyatt]applications were part of a series of continuation applications that claimpriority to ancestor patent applications dating back to the early 1980s orbefore. In addition, all twelve applications were amended to add hundredsof claims that were not included in the original applications.”

    1. They can’t, the underlying patents are unpublished, I think the only thing they can disclose is whether any other published or issued patents claim their priority, or something like that?

      1. If they can count (and publish) the number, then they can also describe (in a generalized manner) the reasons why the applications are still pending without divulging any confidential information.Random, you really are new to this, aren’t you?

        1. Sometimes I feel like you’re not worth replying to. MPEP 100 governs. They can give status information, that’s it.Please don’t crowd this thread with stupidity

          1. You don’t have to worry about me crowding out your stupidity, Random.First the MPEP “controls” nearly nothing (except examiners), as it has no force of law.Second, the actual law that controls is 35 USC 122(a): “CONFIDENTIALITY.— Except as provided in subsection (b), applications for patents shall be kept in confidence by the Patent and Trademark Office and no information concerning the same given without authority of the applicant or owner unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director.” (emphasis added to help the newbie Random)That last little part rather makes a huge difference, don’t you think? Wait, perhaps I should ask, can you think?(You can also check out 37 C.F.R. 1.14)Third, what part of aggregated general information that is not confidential information did you not understand?

            1. They can count and publish the number because status info is not confidential. They cannot explain, even in the aggregate, the actions in the file or anything other than they are not abandoned, which we already know. But by all means, File a request for aggregated general information stating that the length of the examination period qualifies as a special circumstance then. See how far you get.

              1. Your reply is vacuous – you have not addressed the actual law as I have shown to you, nor the reasoning I have given to you.Try again – or for the first time Padawan.

                1. You haven’t cited anything worth addressing. The law on its face says no information. Not no confidential information, not no information that some twit thinks becomes unconfidential by aggregating, but no information. In fact it is my citation that controls, which explains why they can publish the number of applications.But yeah i suppose if you could convince a rational jurist that the PTO announcing it has 450 old cases creates a special circumstance that the director could then use as a basis to violate confidentiality, thereby allowing the PTO to essentially write confidentiality out of the statute on its own. Go ahead and try.

                2. No information would include the information of its existence – as you yourself have admited, this has been made known.Thus you are wrong at the get go.Further, you STILL have not addressed the points that I made (and I even put one in bold for you special).And still further, nowhere did I say anything about violating confidentiality. I am beginning to think that you are not an attorney at all.Son, time for you to wake up.

                3. Who did you bribe to get a law degree? The PTO carries out it’s statutory duty, for example, under 122(a), by promulgating rules, such as those described in the MPEP, which do have force (simply not force that is binding on the court, as they are imbued with more direct interpretive power).In interpreting 122(a) the PTO determined that under the first exception of the statute (“unless necessary to carry out the provisions of an Act of Congress”) that they needed to make extremely limited bookkeeping/status information available to the public, which is codified in MPEP 100.Thus the information of it’s existence is subject to one of the exceptions. Information about the reason it has taken so long to prosecute is not subject to this excpetion.I’m not wrong, because I cited the important and correct controlling rule.Because the status information falls within one of the exceptions to the rule of no information, it can be disclosed. Because no other information is allowed under MPEP 100, it is to remain confidential, even in the aggregate.The information you seek isn’t within the first exception, it theoretically could be released under the second prong. Any intelligent person knows that mere length of examination doesn’t constitute a special circumstance. It’s even more ridiculous because your basis for the special circumstance is the releasal by the office of the fact that 450 patents remain, suggesting that the base reason for special circumstance can be the office itself. Clearly the law doesn’t intend for the office to be the basis of a special circumstance, as the purpose of 122(a) is to restrict the office in the first place.Since you seek information about an unpublished case, and that information isn’t subject to either of the exceptions, it is to not be released.As I said originally, the information Leftcoast sought can’t be released. That’s true regardless of what bad lawyers think.

                4. You are Still wrong Random.There are three layers: Law, Rule, MPEPData can be aggregated and generalized without violating confidentiality. I suggest that you peak over into the medical world, HIPAA or other venues that routinely do such.”Any intelligent person knows that mere length of examination doesn’t constitute a special circumstance. – except when it does – as here (since any intelligent person also realizes that mere length of examination is impacted with guarantees of action under the law [another ‘oppsie’ on your part]).You still have not addressed the last sentence in the law that I provided.But your self-serving rant is amusing. Keep up the accusations of ‘bad lawyering’ all the while you remain incorrect – it makes the froth on your chin weave and bob in a delightful manner.Add: Random, it may fall under your definition of “good lawyering,” but your so-called “I’m not wrong, because I cited the important and correct controlling rule.” parsed that law and left out an “or” and left out my previous comment that used that very same part of the law that you parsed out and that you ‘conveniently’ overlooked and failed to respond to.You really svck at this.

                5. HIPAA, realizing that insurance companies and medical research had to disclose medical information, specifically provides for disclosure when “personally identifiable information” has been stripped. That’s the specific standard in the specific law. So you’re a) wrong that it’s based on aggregation, as even detailed single cases can be disseminated if they can’t be traced to the person, b) wrong that it’s applicable to the PTO as the statutes have different standards and exceptions and c) wrong about the concept generally, as the reason the specific exemption had to be added to HIPAA is because of the general rule that aggregating DOESN’T prevent the violation of confidentiality.For the third time now, I again state that the law clearly didn’t intend to empower the director to release this information as the underlying issue is one of the PTOs making and the underlying motivation (the statement by the office that 450 cases remain) also can’t form a basis for this being a special circumstance. But by all means prove me wrong. You can go pay and get public information, go make your argument to the PTO and/or the courts. Let me know how far you get. I’m done teaching you.

                6. Actually Random, I am right for exactly the reason you post. (hint: think about the nexus between personally identifiable and confidential)You really svck at this, don’t you?(btw, you still have not unparsed the ‘or’ in the actual law)

                7. Oddly my post – innocent as it was – has disappeared.Succinctly, Random, I am correct and you remain wrong.Here’s a hint: think about the intersection between “remove personal identifiable information” and “confidential” and let me know when you realize exactly why you are so wrong.And thank you for ‘teaching me’ – of course, what you think you are teaching and what you are actually teaching are two very different things, but hey, you are new to this (and still svck mightily).

  8. Thanks very much for this “ultra submarine patent applications” information. Only 450 left is a big improvement made under Kappos, but pendency from before June 8, 1995 is more than 18 years, plus 17 years after issuance is more than 35 years from the filing date and is inexcusable.delay. ..

      1. USPTO = Big Business PuppetThe agency has like so many other government agencies, been completely captured by big business interests. This has been the case for at least fifty years. I was friends with Gorden Gould (LASER), and he had plenty to say concerning the agency acting on behalf auto and telecom interests.As far as small entities are concerned, long pendency patents are in large part the fault of the USPTO. USPTO management is in one respect like their commercial counterparts, both always try to place blame outside their organization first, if that fails they try to place blame outside their department and as a last resort, they try to hang an underling. That is exactly what the USPTO and their corporate masters have done. Lie, cheat and steal. Don Banner was the last commissioner who wanted to treat all inventors fairly, Every commissioner since has been a corporate stooge and that is why the number of independent inventors has been dropping.

  9. Dennis the BAE Systems application is presumably a NATO secret patent application newly released from secrecy, enabling it to issue. How many more of the unpublished 450 fall into that category, I wonder.

    1. “According to the PTO, there are now 450 of these old applications still pending at the USPTO. That is down from about 600 three years ago.”Secrecy may be the only valid explanation for why ANY such old patent applications are still around. Can anyone think of any other reason that passes a sniff test?.”with the generous patent term adjustment offered’I would take issue with the description of ‘generous.’ Missing from the conversation (largely) for applications that might be covered by PTA (which would not be the applications pre-URAA) is the notion of Quid Pro Quo and the fact that publication prior to grant takes the Quo with no exchange of Quid, and that the PTA guarantees not only sought to equalize the change in term relative to 17 and 20 (with three years eaten up by prosecution), but that with (sometimes mandatory) publication, an applicant’s ability to obtain the aforementioned exchange of Quid Pro Quo is substantially altered. There is no ‘generosity’ involved with the PTA guarantees when the rest of the story is told.

    2. Sorry, for the confusion. The 450 number only includes applications that are not being held-up by a secrecy order.

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