Accelerating ex parte PTAB Appeals: For a Fee

By Dennis Crouch

The Patent Trial and Appeal Board (PTAB) is burdened with a statutory mandate to quickly reach final determination in its post-issuance review trials. To meet that requirement, the PTAB has put tremendous resources into its trial teams to ensure sufficient bandwidth to handle the hundreds of inter partes trials. At the same time, a 25,000 case backlog of pending ex parte appeals persists at the Patent Trial and Appeal Board.  Those cases do not have as clear of a statutory-mandate for rapid processing and, as a result, have clearly languished as the Board developed its post-issuance review trial program with most cases now waiting more than three years for a decision from the Board. (Notice-of-Appeal to Board Decision).  Rather than dealing with its poor statistics, the PTAB appears to have simply stopped publishing them.

For many patent applicants (though certainly not all), the appeal delay is costly because it extends a period of ambiguity and it delays issuance of the patent rights.  Certainly, the vast majority of long-pendency patent applications (those that issue more than 7 years after filing) spent considerable time in the appeal queue awaiting a reversal of an examiner rejection. Those late-issued patents have the potentially of being disruptive to marketplaces that have developed and grown in the absence of an issued patent.

A few months ago, I conducted what I called a “10-second”survey on Patently-O regarding the potential market for accelerated PTAB decisions in ex parte cases.  I asked:

Would you pay an extra $5,000 for accelerated PTAB decisions in ex parte cases that issue[] within nine months rather than waiting the standard 2 1/2 years?

I should note that the 2 ½ year figure had increased. The results are instructive and somewhat fit the model seen with the $4,000 fee for prioritized “track one” examination, although the market for accelerated appeals seems somewhat greater.  The vast majority of the 614 responses indicated that they would use the fast track in at least some cases – with most indicating that the fast track would be used in >5% of cases.

AcceleratedAppeals

Although not any final word on the market for accelerated appeals, the chart is indicative of a demand for accelerated appeals.  And, although not a solution to the docket problem, acceleration of a subset of appeals offers the potential of alieviating the most some of the more pointed needs.

I should note here that a subset of accelerated examination cases (“made special”) are also accelerated when pending before the PTAB. However, those do not include prioritized examination cases under the pay-for-speed program.  I do not have any statistics on how that acceleration impacts the timing of appeals.

218 thoughts on “Accelerating ex parte PTAB Appeals: For a Fee

  1. Dennis,

    I must agree that your position about the PTAB no longer updating its statistics is sad on many levels. The only statistic that still appears regarding the PTAB is in the Pendency from Application Filing to Board Decision which may be found in the USPTO Dashboard. Currently it shows that this particular period has almost made the 7 1/2 year mark.

    Reply
    1. Didn’t Obama run on a platform of “transparency?”

      Maybe he meant only for others…

      Reply
  2. OT, in the “our attorneys are so st oopit that it burns” department:

    link to arstechnica.com

    US District Judge Lucy Koh has now ruled that Samsung won’t get a last-minute Alice reprieve. In a short five-page order (PDF), Koh found that Samsung didn’t raise any defenses from the area of patent law that Alice relates to, Section 101, and it can’t do so now.

    “Samsung enumerated 31 disputed legal issues—including defenses under 35 U.S.C. §§ 102, 103, and 112—but did not identify any § 101 defenses against any Apple patents, nor incorporate Samsung’s earlier invalidity contentions,” explains Koh. “Critically, Samsung did not raise § 101 at trial or in any pre-verdict or post-verdict motions… Samsung’s untimely attempt to invalidate two asserted patent claims months after the close of trial would unfairly prejudice Apple.”

    It was always a baffling mystery why Samsung never raised a 101 to challenge to Apple’s j nk. The only imaginable reason for this failure was that Samsung was afraid of how a successful challenge might affect their own portfolio of computer-implemented j nk. Of course, now their admissions before the court regarding 101 are on the record but they’ll see zero reward for it in this case. Well played … not.

    Reply
    1. Malcolm, I agree on the bad lawyer part. But I am not sanguine about whether there is a viable 101 challenge to the slide to unlock patents.

      Reply
      1. “challenge to the slide to unlock patents.”

        The fact that you and thousands of others refer to them as the “slide to unlock patents” is dam ing enough.

        Reply
  3. FERRING B.V. v. WATSON LABORATORIES, 16 INC. – FLORIDA
    link to cafc.uscourts.gov

    Watson submitted an ANDA that did not specify what it intended to sell in terms of the limitations in the relevant patent. The district court found infringement based on the act of submitting the ANDA. The Federal Circuit reversed because the district court finding was an error of law and further because the patent owner had not proven that commercial product infringed – which the Feds said was required when the ANDA is silent on the details of the product it intended to sell vs. the claims. (The ANDA was apparently based on invalidity.)

    Reply
  4. MFORMATION TECHNOLOGIES, INC. v. RESEARCH IN MOTION
    LTD.
    link to cafc.uscourts.gov

    District Court clarified its claims construction and entered a JMOL of noninfringement. The Federal Circuit held that the clarification was not a modification but was inherent in the original claim construction and jury instruction. Had the construction represented a change, not only would JMOL have been improper, but there would have been a need to retry the case.

    In the case at bar the claims as construed required transmitting the contents of a mailbox after connection was established. The accused blackberry system did not transmit the contents of a mailbox after an establishment of connection was complete. The patent owner contended that the requirement that the establishment be complete before the contents of mailbox are transmitted was a post verdict modification to the claim construction. The Federal Circuit ruled that the requirement was inherent in Judge Ware’s jury instructions that required that the “establishing a connection’ sub-step must be completed before the ‘transmitting the contents of the mailbox’ substep can commence.””

    Reply
  5. I have been waiting 3 years to hear back from what is now called PTAB. And you’re suggesting the deep-pocket appellants all move to the head of the queue and all of the small/micro guys like me get the screw. The first response that comes to my mind is rather earthy, just two words, one of which is “you.”

    Next you will be suggesting that the deep-pockets pay a fee for accelerated treatment by the CAFC, and for an extra $100,000 we can get you a writ of certiorari to the USSCt, should you need it — the Miranda, Gideon, and Section 1983 cases can wait.

    But the USG, being what it is, would likely smile on this nonsense. Those flying 1st class don’t have to go through the TSA frustrations and indignities that we proles do. And, of course, there is accelerated examination, which is flying 1st class in the PTO. The proles, by definition, are the ones who don’t get the perks. Why, in America, should that definition be any different w/ respect to governmental services? Rhetorical question, mind you.

    The current problems w/ PTAB backlogs go back to the Dudas clusterf. Put that bar graph up again w/ time on the x-axis and exponentially growing appeals on the y-axis. Now you’re saying the remedy for that mess is to A) penalize those who can’t afford the fast lane and B) reward the PTO with a windfall fee. I don’t think so.

    The term extension is a partial remedy. Also, if the appl is published, retroactive enforcement of the eventual patent is another. But the remedy is not to reward the PTO for its negligence and incompetence.

    Bribery is the payment of something of value to a government official or body in exchange for preferential treatment. How does this idea deviate from that definition? Your whole idea is anti-proletarian poppycock, IMO. It’s as bad as the accelerated examination crp, and probably as unconstitutional. Please flush it and move on. You’ve got more intelligent ideas to discuss here.

    Reply
    1. Bribery is the payment of something of value to a government official or body in exchange for preferential treatment. How does this idea deviate from that definition?

      For that matter, how does the patent system deviate from that definition?

      Or the whole “pay your income taxes as assessed, and you get to not go to jail” thing?

      Reply
    2. IANAE says…

      Oh boy, the examiners are going to come out of the woodwork to defend the PTO.

      Reply
      1. IANAE read what he wrote and respond to it rather than your typical crxp response that ignores what the person wrote and then responds with some half truth that is half on point.

        Reply
        1. Now IANAE is an example of someone that was effectively shamed. I remember awhile back when he delighted in derailing nearly every conversation.

          Then he made a few posts that showed his true colors for Infringers’ Rights and was deeply shamed for such anti-patent views.

          He has been largely a non-factor ever since – dazed and confused by his addiction to Calvinball face spikes.

          :-)

          Reply
              1. Dan, I checked that page, and looked at the Clarke page linked to.

                I found this:

                “Its simple and catchy wording has been often parodied with variations such as “any sufficiently advanced incompetence is indistinguishable from malice”.”

                It really does help explain why so many people think there is so much malice in patent prosecution, on both sides.

                Reply
              2. DanH/Leopold….
                Provoke the establishment…?

                LOL – since when is the little circle here “the establishment?”

                You have a way overblown self image there friend.

                Reply
              3. You have a way overblown self image there friend.

                Yes, Galileo, I’m the one with the overblown self image.

                Reply
              4. Yes Leopold – you are.

                Hre (again) you have a smarmy reply shot down.

                Did you just google the name and see a denigration that you thought fit?

                Clearly, the link you provided does not fit the situation here.

                Your aim is – as usual – off. The red cape of “anon said” stirs you to make a f001 out of yourself again.

                Reply
              5. Did you just google the name and see a denigration that you thought fit?

                You’re not making any sense. You’re the one who cast yourself in the role of Galileo, not me. Come on Billy, what are you trying to say?

                Reply
              6. (yawn)

                The “billy-what are you trying to say” meme does not work for Malcolm. Why do you think it will work for you?

                Clearly the link you provided does not reflect my use of the Galileo principle. There is no “establishment” that I am bucking, and most definitely my detractors do not use any semblance of scientific method to which I am ignoring. You pulled the link merely on a “key word” search type of hit, and you do not understand what you think that you are saying.

                Much like past times we have locked horns and you have come up far, far, far short.

                Which reminds me, you still owe me reference materials related to our ladders of abstraction discussion. Or is that (too) a conversation that you have conveniently forgotten about?

                Reply
              7. Clearly the link you provided does not reflect my use of the Galileo principle.

                We’re not talking about the link I provided, Galileo. We’re talking about the link you provided, on several occasions, i.e., the link to link to en.wikipedia.org . It’s abundantly clear who’s playing the role of Galileo in your fantasies. And yet I’m the one with the overblown self-image.

                Looks like your comments are yet another example of AOOTWAD…

                Reply
              8. We’re not talking about the link I provided,

                Is it nice on that planet you are on? Here, on Earth, it is swell.

                And we are talking about the link you provided because it is a bogus link, much like most everything else you attempt to throw at me (and – as usual – FAIL).

                Try to keep up.

                Reply
      1. My guess is that the argument is a misapplied “equal protection” argument. That seems to be the usual one.

        Reply
          1. LOL – I was thinking the same thing: focus on the one possibly errant tree and miss the entire forest of what Babel’s post is about.

            It is alarming to see just how often DanH/Leopold acts as a cheerleader to Malcolm’s lead – and how extremely infrequently DanH/Leopold speaks up when Malcolm spouts his usual short script banalities.

            The merry-go-round continues.

            Reply
            1. what Babel’s post is about

              What is Babel’s post about? He’s whining about some patent that he thinks he deserves yesterday.

              Let’s see the claims and prosecution history and then we’ll know if this terrible injustice is actually occurring. Otherwise, BB’s ranting can be presumed to be that of another well-heeled whiner complaining about the bad ol’ government on the Internets. Dude didn’t even try to give any detail. “I’ve been waiting 3 years.” So what? Who cares?

              Reply
              1. Obviously you do not care and miss the point that such waiting itself is the problem (and this does NOT depend on the particular details that you always seem to want to wallow in, mr. brier rabbit)

                Open your eyes and get a clue.

                Reply
              2. “What is Babel’s post about? ”

                I would very much like to know as well. It was too long and ranty in most parts for me to suffer through reading.

                If someone could sum up the “point” in a sentence that’d be amazing.

                Anon says below that the “point” is that “waiting itself” is the “problem”. Whose problem anon? Babel’s?

                Reply
              3. >Let’s see the claims and prosecution history and then we’ll >know if this terrible injustice is actually occurring.

                So, you want to see the claims before deciding whether or not there was a procedural injustice. That is another indication you are not an attorney as you want to negate –equal under the law. You have sunk to new lows. Every evi1 uses that mechanism to get their way in law. The racist, Naz1s, etc.

                Mor0n Milly (MM) now you stand with the Naz1s and racist to negate the rule of law to get your way. Heil Mor0n Milly (MM). Sieg Heil Mor0n Milly!!!

                And, no I am not overreacting. Milly, re-think negating the rule of law.

                Reply
              4. ” Every evi1 uses that mechanism to get their way in law. The racist, Naz1s, etc.”

                Every evil uses the mechanism of asking to see the claim to get their way in lawl? Even racists, nazis etc?

                Reply
              5. Night it is a wonder that a decent blog tolerates a vicious, puerile, nincompoop like you.

                MM is and has always been the most logical and coherent poster here, even if you do not like what he has to say. In contrast, almost all your posts about any topic consist almost exclusively of personal attacks, slander and libel.

                Reply
              6. Pure CRP:

                MM is and has always been the most logical and coherent poster here

                Tell me Ned – is that why Malcolm has had more posts expunged for being vile and improper – more than everyone else combined?

                All this is, is more Ned CRP “6-agrees-with-me-so-he-must-be-a-genius”

                Way to bury your credibility even lower Ned.

                Reply
              7. Ned you are so full of it. MM consistently advocates breaking the rule of law. Do you know what that it is ?

                Do you understand the implications of breaking the rule of law? Do you understand why it is so wrong to say let’s see the claims (your race or religion) before we decide whether or not a law was broken. Do you get that? Man you so deep into your judicial activism that you don’t even understand the MOST fundamental principle in law. The MOST important principle!!!! Equal under the law. Repeat it Ned at least 1000 times before thinking of typing another word.

                Why don’t you stick to your tortured interpretations of cases from the early 1900’s to support you proposition that information processing should not be eligible for patentability.

                And if you think MM’s post are the most logical then obviously you have a serious mental problem.

                Reply
              8. And Ned you are a man of no integrity. I have highlighted posts from MM where he is vulgar and rude to people on this board only on the basis of the content of the posts.

                He consistently is abusive to anyone that doesn’t agree with him. So, your credibility has gone to zero Ned. You are obviously a paid blogger fighting for your life. And not doing so well against me, are you?

                You have no chance against me in legal reasoning. You just don’t get it. You can spend your endless hours blathering on and on, but you don’t understand the law.

                Reply
              9. 6, I will assume that you question is sincere. What MM is doing 6 is saying let me see what your claims are before I decide whether the law should be administer to you. Whether or not you have rights under the law based on your claims. This is the same way that the Naz1s and racist used the law. You don’t break equal under the law. It is an inherent evi1. It is wrong.

                MM repeatedly and consistently advocates breaking the rule of law. It is reprehensible.

                Reply
              10. Night, I do not agree with MM politics on the whole as he is an ardent democrat and I am not.

                Neither do MM and I agree on a lot of patent law. But our discussions have always been respectfully. We state our positions and make argument. I think at times I persuade MM because the next time I see him argue a point, he sees it from my point of view.

                I listen to him, because he is most often right. He has excellent instincts and asks the hard questions.

                So the bottom line, MM does not badger me and never has despite that we often disagree. What I see is that he recognizes a troll when he sees one, one who argues using strawman and illogic, false premises and every other trick in the book. Long ago he identified anon as a troll.

                We disagree on 101. But that is no reason to call me names. But you do.

                Reply
              11. Ned, you call me names. Your bizarre characterization of MM is out of this world. I have specifically pointed out interactions between MM and outside posters where he was rude and vulgar towards the poster based solely on the content of the post. The poster was polite. You ignore this.

                In fact Ned what I see from you in arguments with you and regarding MM is that you simply ignore facts that you don’t like. Bizarre that you think that an educated person would fall for this tactic. Ned some of us notice that you just don’t respond to the key points and don’t acknowledge things like MM abusing a new user because MM doesn’t like their view point.

                But, Ned, you can ignore and just claim a different reality all you want. That doesn’t make it real Ned.

                Fact is that you call me names all the time. You ignore arguments. You ignore MM’s behavior. In this exchange, for example, did you opinion on the importance of the rule of law? Gee, why not? Maybe because MM continually advocates not following the rule of law which is abhorrent to any ethical attorney.

                Man, Ned, you are one head case to think that you can just ignore things and paint your own reality. It is very offensive.

                Reply
              12. “Equal under the law. ”

                All appeals are “equal under the lawl”. They’ve all been rejected (usually 2x if proper lol). And they’re all being reviewed. There is nothing wrong with the DMV opening an express lane for a 20$ charge. In fact, most all DMV’s probably should do just that and everyone would make a killing, the workers, and the people wasting their time there otherwise.

                Reply
            2. Night, it is you who insults and ignores arguments. You also refused to answer simple questions that if you did answer the questions you will see the fallacy of your own position.

              Reply
              1. So again, the substance of my complaint is that MM is continually advocating not adhering the rule of law. You ignore this and attack me personally.

                Reply
              2. I “love” that Ned wields the short script weapon of AOOTWMD…

                I would love to compare the conversations we have had – noting exactly how many times Ned has run away from the conversation when pertinent points have been made.

                (and “answers” like his reply to the Set B-Set C differences are not really intellectually honest answers:

                I have no idea” [Ned’s lack of understanding]

                What are you talking about?” [Ned’s lack of understanding]

                What issue?” [Ned’s lack of understanding]

                There were no ‘policy concerns’” [Ned’s abject denial of which entity inserted the doctrine]

                you are assuming facts not in evidence” [Ned’s outright 1ie or lack of understanding – take your pick]

                you are erecting strawmen” [Ned’s non sequitur (and false) ad hominem]

                Reply
              3. Ned’s game of selecting which points he will respond to is ridiculous. It is clear troll behavior. And the more I ID him as a paid blogger and troll, the more vicious he becomes towards me.

                Reply
              4. In this case the rule of law is central to the anti’s movement. They want to have two PTOs. One for information processing applications and one for everything else. That is pretty clear. Not equal under the law.

                Reply
              5. Night: “You have no chance against me in legal reasoning. You just don’t get it. You can spend your endless hours blathering on and on, but you don’t understand the law.”

                Night, what is said that you, no doubt, actually believe this.

                But it does explain why simple concepts evade you.

                Reply
              6. LOL – Ned – look at what you write in response to NWPA.

                Read it.

                Then apply it to your yourself (liberally) – the fallacies of your own positions… simple concepts evading you… (how does your personal inability to understand the Nazomi case and your personal inability to understand the distinction between Set B printed matter and Set C printed matter stand out in contrast to how you are addressing NWPA?

                How does your own parse and ignore tactics of both case law and what is presented on these boards stand out in contrast to what you accuse NWPA of doing?

                How low can you go?

                Reply
              7. You have reduced this interaction to absurdity Ned. Again, the substance of my post was that MM expressly advocates not following the rule of law.

                You have not addressed that issue.

                Reply
              8. NWPA,

                But why would Ned bother addressing that issue when he can act exactly like Malcolm with the AOOTWMD and call you names and accuse you of not addressing issues or answering simple questions (exactly like what Ned does to my points put before him)?

                He lives in his special little bubble of Ned-IMHO-law and anyone that happens to agree with him is a genius and their short script shenanigans are simply relabeled as “swagger” and is something to “be enjoyed.”

                Heaven forbid that any point presented that impugns his special third party interests actually be treated with any sense of intellectual honesty or (gasp) ethical treatment as a lawyer must do with material aspects of law.

                Ned cannot even get basics down like which entity introduces a limiting concept, or whether that same entity itself realizes a fundamental difference between what I have cogently labeled as Set C and Set B matters.

                Ned cannot even bother with providing working hypotheticals in the Useful Arts, and instead sullies himself with poems (and then does so in a most obnoxious carpet bombing multiple post style).

                And don’t you just love his stale and trite “fake umbrage” card of setting forth “a deal” that he himself breaks in order to create an excuse not to address the substantive counter points put before him?

                What a t001 he is.

                Reply
              9. Yeah I agree anon. But, don’t take it too seriously. Ned and MM have an agenda they are following. Intelligent discourse means nothing to either one of them.

                Reply
              10. “MM is continually advocating not adhering the rule of law.”

                When did he advocate for such? Asking to see the claims before coming to his own personal opinion on whether an injustice was underway is not advocating for not adhering to the rule of lawl.

                Reply
      2. That’s a valid question, eh? You don’t see a constitutional tension between preferential treatment by the government and equal treatment under the law? Am I being overly egalitarian in my view of the Constitution?

        Let me try a couple ad absurdum type analogies. Would you see a constitutional problem if:

        1. Your local government passed an ordinance that provided for “expedited response” by the fire department to those home owners whose property was valued above some arbitrary threshold (meaning they paid more property tax) or who paid a voluntary 10% “expedited fire-response surcharge”?

        2. How about if the public school system offered low-ratio 5:1 student:teacher classes to parents willing to pay a $10,000/semester “accelerated learning surcharge” and the poor kids’ ratio went from 25:1 to 40:1 as a result? Sounds good to me, if I’m rich enough.

        3. Or how about a provision in the USC that allows defendants in criminal proceedings in USDC to shift a statute of limitations backwards a few years if they pay a $500,000 “prosecution avoidance surcharge?” There would be no discriminatory intent, of course, because the option would be available to any defendant with $500,000. And as for a reasonable and rational governmental interest . . . well, that would be to reduce the backlog of cases and reduce prison populations. Done deal.

        When ya’ get going, the possibilities for the user-pays model of government are limitless — far, far beyond just the National Parks.

        But your unspoken point is taken: I’m not aware of any USSCt equal protection cases regarding alleged disparate treatment of individuals by a government entity based on economic status. If you can’t afford to get into Yosemite and enjoy what your taxes are paying for, go back to Detroit, the white people driving Lexises are waiting to get in. If you can’t afford preferential treatment in the PTO, quit whining — file in the EPO, or JPO, or . . . NoKo if all else fails.

        I doubt whether the USSCt as constituted now or in the reasonably foreseeable future would apply strict scrutiny analysis to governmental discrimination based on who is willing to pay for expedited (or any) governmental services at the expense of those who can’t. Certainly not the present Court. As that fat lady Roger B. Taney once said: “It ain’t unconstitutional until we say it is.” So maybe you’re right. Hope not.

        Reply
        1. The funniest thing though Babel, is that you were maligned by none other than Mr. anti-“Grifter” himself Malcom Mooney.

          KA-BLOOEY !

          Reply
        2. Your third example implicates a fundamental right, so is likely to trigger strict scrutiny. Some version or another of #2 goes on in many states already, and no, I don’t think there’s a good argument under the U.S. Constitution. More or less the same is true of #1, although most municipalities are politically savvy enough not to be so blatant about it.

          Look, I agree with you that the expedited appeal idea is a bad one. I just think that “unconstitutional” is increasingly thrown around today as a synonym for “I don’t like it.”

          Reply
          1. (nad yet DanH/Leopold is perfectly happy to sit by silent when so much more flagrant CRP is posted that is nothing more than the anti’s “I don’t like it.”

            Yet another hypocrite.

            Reply
          2. There is a level at which it could be deemed unconstitutional. It should be unconstitutional. Let’s face it. With our system the justices can do just about anything they want. May take them a few years and multiple cases, but they make more law than Congress.

            But, DanH, anon’s point is valid. You picked on a minor point of his instead of the broader post. It appears you did this to disrupt the post like the great troll Milly Mor0n (MM).

            And unfortunately more and more our country is becoming like Babel boy’s examples. I watched in person a hearing where there were three men accused of murder. Only one man had the money for the GPS tracking so he got bail. The other two were put away for 6 months waiting for trial. And, the one with GPS tracking had a much, much worse record.

            I think this type of system is inherently unfair and leads to many more problems than it solves. At the PTO it is clear that they are setting up these little outs for big $$$ that relieve the pressure on them from big corp. Shameful.

            Shadow director Lee is ill equipped to understand how to fix the problems at the PTO and her only talent is rhetoric in why we don’t need patents. Shameful.

            Reply
            1. There is a level at which it could be deemed unconstitutional. It should be unconstitutional.

              Is that legal analysis, NWPA?

              Reply
        3. “Your local government passed an ordinance that provided for “expedited response” by the fire department to those home owners whose property was valued above some arbitrary threshold (meaning they paid more property tax) or who paid a voluntary 10% “expedited fire-response surcharge”?”

          Strangely enough they effectively have something worse than this in many areas. You have to pay x amount in fire dept coverage or they won’t even come to your house, there are some stories about this on the web. Mostly people in trailers are having their stuff burnt down.

          Reply
    3. “The current problems w/ PTAB backlogs go back to the Dudas clusterf”

      To be fair, the dudas cluster f was likely the outcome of the state street cluster f. You’ve really got to take things on back a bit.

      Reply
      1. Simply wrong 6 – as has been shown before, not one particular art unit ge ner a ted the Charlie Foxtrot under Dudas.

        Wake up.

        Reply
        1. Of course not anon, it was simply the flooding of garbage patents under state street that prompted dudas to crack down. Thus everything else spirals.

          But anyway, I think D himself posted a graph and explanation that the explosion at the BPAI had little if anything to do with Dudas a year or so ago.

          Reply
              1. lOL_ no 6, you are wrong because you are wrong – very much quite independent of me.

                Try to grasp that concept.

                Reply
    4. Babel Boy, talk about clusterf, consider serial reexaminations. They can keep a patent tied up in the PTO until it expires. All that time courts will stay and delay, no one will license, and the so-called constitutionally required grant of a limited term of exclusivity becomes an empty promise. What one gets is not a patent, but a target — for reexaminations.

      Reply
  6. Yes that is right there is a great demand for the PTO to do their job. What a surprise.

    Imagine going to the motor vehicles division and there being a line of a mile. They say you can apply for your license and go to the front of the queue if you have an extra $1,000.

    Or, dial 911 and get a voice prompt to enter your credit card number for a “more prompt” response.

    That is what this is like. Third world country. The PTO is an agency to serve the public. They are not part of the free market as Examiner Mooney claims below.

    Reply
    1. Thanks for the Google shill as director Obama. You see Obama this is not like community organizing. We need real people to lead the PTO that can get the job done. Not people that spend their time telling us that there are other incentives besides patents.

      Reply
      1. But I guess now that the drums of war are once again being pounded very loudly I better be careful what I say. The nxt jobs with flags will come after me for saying anything against the government.

        Reply
    2. You know the passport people do that. You have to pony up and then you can get your passport without waiting 6 months.

      A friend who was not an American citizen at the time told me what he had to do in the Ukraine to get his Ukrainian passport renewed. It was basically going back there and then paying people off to get it done. He said the government employees demand payoffs to get anything done.

      I can’t remember but I think he said it cost $500 in bribes to get his passport renewed.

      Reply
    3. :Imagine going to the motor vehicles division and there being a line of a mile. They say you can apply for your license and go to the front of the queue if you have an extra $1,000.”

      The state of New Mexico does this exact thing, except it doesn’t cost $1,000. They’ve got the official state DMVs and then there are these contract places called “Fast Lane” DMV or something similar. Prices for the same services are more, but the lines are much shorter.

      Reply
  7. Relative to examiners working in similar arts, how hard do the APJs work, anyway?

    Reply
    1. I’d guess the best way to characterize it is the examiners are the blue collar workers at the factory and the APJs are the white collar workers.

      Reply
      1. Don’t be ridiculous 6. APJs spend a lot more time on an appeal than 30 minutes. But, the APJs do have a count system very similar to yours.

        They get a count for writing a decision for an appeal just like you get a count for writing an OA. Not sure why that would be a surprise to anyone.

        Reply
        1. I am also sure that I read about their count system somewhere. Probably in some report they generate on productivity for Congress.

          Reply
        2. I am also sure that I read about their count system somewhere. Probably in some report they gen erate on productivity for Congress.

          This “Gen e” filter is a pain. MM can’t you just promise to stop libeling Gen e? Send Dennis email and promise to stop so Dennis can readjust the filter to remove the “Gen e” filter.

          Reply
          1. What other filters are in place here? Is there a list anywhere of all the naughty patent-specific words commentators must strive to avoid?

            Reply
              1. Evidently not….

                But I would second Egon’s post, and we could call it the honorary George Carlin Patent Word List.

                Reply
        3. “They get a count for writing a decision for an appeal just like you get a count for writing an OA.”

          Pull up model decision, write two paragraphs, maybe both are FP’s, take the day off.

          Reply
        4. The APJs have a flat production goal of (IIRC) 83 decisions per fiscal year. Of course, they generally act in panels of three, so their work includes discussions and reviews of ~166 cases for which they will not receive counts.

          Reply
      2. 6 jumps into the weeds, confusing what he does (a skim reading) with what it takes to create the written appeal.

        /face palm

        Reply
        1. (and the hilarious thing is that the likes of Random Examiner and Ned would want to promote examiners to be Article I judges at the PTAB in order to deal with the mess that poor examination has created in the first place)

          Nothing more than the attempt at history by Dudas of the Office rejecting its way out of the backlog, but wanting to defeat the path available to applicants by way of appeal.

          Funny that, I distinctly recall an attempt to frustrate the appeal process was soundly defeated by certain individuals who called attention to the Office’s wayward Appeals Rules package back in the Tafas timeframe. As 6 would say (slightly paraphrased), “lulz on that lawls”

          Reply
        2. “6 jumps into the weeds, confusing what he does (a skim reading) with what it takes to create the written appeal.”

          I’m talking about reviewing the appeal re re. Not creating the written appeal.

          Reply
          1. talking about reviewing the appeal

            You are clueless as to what you are talking about.

            Reply
      1. If I have access to a secretary or paralegal to write it up for me then it would take me about 5 minutes or less.

        #dayoff

        Reply
  8. ABBVIE INC. v. KENNEDY INST. OF RHEUMATOLOGY
    link to cafc.uscourts.gov

    The Federal Circuit held the second-to-issue of two patents having the same disclosure and the same filing date (albeit not the same priority date) and claiming essentially the same invention to be invalid for obviousness-type double patenting. Because the first patent contained a claim to an earlier priority date that the second patent did not, the two patents expired on different dates.

    The patent owner had argued that there is no policy reason remaining for obviousness -type double patenting after the United States adopted the 20-years-from-filing patent term. The Federal Circuit disagreed, stating that while the problem had largely been resolved, the patent statute, § 101, limited a patentee to one patent on the same invention, and it was still possible, even with patent term measured 20-years-from-filing to have two patents on the same invention with different expiration dates.

    The second-to-issue of the two patents claimed a species of the genus disclosed and claimed in the first-to-issue of the two patents. The only material difference between the two patents was the claimed utility of the treatment method with respect to particularly sick people in the second patent. The court held that this was not unexpected in view of the fact that this very utility was disclosed with respect to the genus invention patented in the first patent.

    Reply
    1. The most interesting aspect of this case is the background:

      On December 23, 2002, AbbVie1 sought and obtained a license to the ’766 patent. Thereafter, AbbVie obtained FDA approval to sell Humira, an anti-TNFα antibody, for use either alone or in combination with methotrexate to treat rheumatoid arthritis. AbbVie paid Kennedy over $100 million in royalties for AbbVie’s sale of Humira in the United States. Once the ’442 patent issued in 2010, Kennedy demanded that AbbVie secure an additional license for that patent in order to continue sales of Humira.

      That’s pretty much the definition of greed right there. Congrats to AbbVie for telling Kennedy where to stick their second patent after Kennedy’s first patent expired.

      The final footnote is relevant to the Myriad case(s):

      It would shock one’s sense of justice if an inventor
      could receive a patent upon a composition of matter,
      setting out at length in the specification the useful purposes of such composition, manufacture and sell it to the public, and then prevent the public from making any beneficial use of such product by securing patents upon each of the uses to which it may be adapted.
      48 F.2d 665, 666 (CCPA 1931).

      What’s more shocking to the conscience is when the patentee doesn’t even own the conventional sequencing methods that it’s attempting to prevent others from using for their intended purpose (i.e., to identify the presence of particular sequences).

      Reply
      1. MM, I think the patent owners wanted to raise rents even though it had contract for a specific royalty. I have a hard time believing they truly thought they were entitled to a second royalty on the same invention.

        But this brings up the following question:

        Do you or does anyone know of a case involving two patents covering the same products and where there had been a terminal disclaimer filed? If so, did the court allow two different royalties, or only one royalty?

        Reply
      2. Love those 1931 CCPA cases.

        In re Russell (In re Russell, 48 F.2d 668 (C.C.P.A. 1931)(printed matter is nonstatutory)) was a 1931 as well, and many here refuse to even consider it because it was decided so long ago.

        Reply
        1. Your version of Russelll is a gross over-reading.

          Mere arrangement of printed text: writing – Set B printed matter.

          The case has ZERO to do with Set C printed matter.

          Reply
          1. I’m sorry, anon, but it is your idea that printed matter was excluded because of some policy reason is what is off-base.

            “It may be observed, however, that the only matter claimed to be new is the alleged novel arrangement of names.

            The mere arrangement of printed matter on a sheet or sheets of paper, in book form or otherwise, does not constitute “any new and useful art, machine, manufacture, or composition of matter,” or “any new and useful improvements thereof,” as provided in section 4886 of the Revised Statutes, 35 USCA § 31″

            The cases cited include Guthrie that relies on Hotel Security. In re Dixon that states:

            The appellant has prepared a form of a promissory judgment note with attorney’s fee clause, and a declaration of lien written therein, and seeks to patent it under application, serial No. 123,682, filed July 20, 1926. Both the Examiner and the Board of Appeals rejected the application on the ground that the alleged invention did not constitute a new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements thereof, as required by section 4886, Rev. St. (35 USCA § 31). We are in entire accord with the decisions of the Patent Office tribunals. The law is well settled by Hotel Security, etc., v. Lorraine Co (C. C. A.) 160 F. 467, 24 L. R. A. (N. S.) 665; ”

            And the beat goes on.

            Non statutory, and unpatentable when claimed with old but eligible subject matter.

            Reply
          2. anon, what you also fail to appreciate is the one must look to the novel aspect of the claimed subject matter. It is clear that programmed computers are statutory. It not clear that a programmed computer that calculates new numbers that have business utility is statutory for the reason that business utility is not statutory.

            Now, you might cite Bilski — but Bilski is a true aberration, and Prometheus/Alice has restored the focus to the novel aspects, giving no weight to old elements for patentable subject matter purposes. Subject matter that is nonstatutory cannot be saved by adding routine or conventional elements that are statutory.

            Reply
  9. Dennis: Although not any final word on the market for accelerated appeals, the chart is indicative of a demand for accelerated appeals.

    Indeed. It shows that greater than 80% of respondents would consider paying an additional $5K to accelerate at least some of their appeals.

    Reply
    1. Yes that is right there is a great demand for the PTO to do their job. What a surprise.

      Imagine going to the motor vehicles division and there being a line of a mile. They say you can apply for your license and go to the front of the queue if you have an extra $1,000.

      That is what this is like. Third world country.

      Reply
      1. Shadow director Lee should focus on the PTO and getting it to work right and now on telling us that patents aren’t really needed.

        Thanks Obama for the Google shill.

        Reply
  10. Is it true that Dennis and Mooney are the same guy? If so, that would make this blog a whole lot more interesting.

    Reply
    1. It would also make it interesting the fact that Malcolm has had more comments expunged for being inappropriate than all others posters – combined.

      Reply
    2. Is it true that Dennis and Mooney are the same guy?

      I’ve met and spoken with Dennis Crouch in person, and attended his presentations at AIPLA. I have found him to be uniformly respectful, professional, and open to contrasting views.

      If Dennis Crouch and MM are one and the same, it’s one of the most severe cases of multiple personality disorder in the history of medicine.

      Reply
        1. What if we’re all just figments of anon’s imagination in his purely mathematical universe?

          Reply
  11. I’m opposed to any measures that push our patent system further in the direction of a “tiered” system of law, where wealthy players can pay more for better service, and to tilt the system in their favor.

    Our patent system already has too much of that inequality. As shown by last week’s article about Intel defending itself at the cost of $9 million in attorney’s fees, the entire litigation branch of patent law is basically unavailable for most companies. Big companies can destroy small companies simply by filing a lawsuit that they can’t afford to defend against – irrespective of the merit of the patent. That tactic governs both small-company-as-accused-infringer, and small-company-as-patent-owner (since the big company can file for declaratory judgment).

    It would be terrible to transform patent examination to a similarly tiered system.

    Reply
    1. Big companies can destroy small companies simply by filing a lawsuit that they can’t afford to defend against – irrespective of the merit of the patent.

      Baloney.

      Reply
      1. Baloney.
        I see that you are living up to your reputation of providing high-quality responses.

        Reply
        1. I’m happy to discuss further at great length, Slo Mo.

          The cost for eliminating the worst of the worst patents out there is not terribly high if you understand the ins and outs of subject matter eligibility (something you have great difficulty with). Of course, you might need to make certain arguments that could negatively affect your own patent portfolio should you also be feeding from the same barrel bttm as the patentee who is seeking to “destroy” you with its meritless patent.

          Look forward to additional reforms to make eliminating computer-implemented j nk and many forms of business method patents even more cheap and easy to flush down the t– let.

          Reply
          1. Such daunting handling and presentation of law and fact from Malcolm is just awe-inspiring…

            Reply
            1. MM just laid some shock and awe on us. I’ll be stunned into silence for … oh about … I don’t know … maybe a few seconds.

              Reply
              1. just laid some shock and awe on us.

                was that a change in pace from the typical “shockingly awful”…?

                ;-)

                Reply
    2. I think it is already a two-tier system. But, I agree with you that in gen eral this is a bad idea. Does anybody else realize that the more it becomes a system where you need big $$, the more it is like a third world country?

      The basic system is broken and needs to be fixed. This merely takes the heat off the PTO from the big players who will figure it is easier to pony up then complain.

      How about figuring out why all these appeals were filed? Figuring out how to do prosecution better so we don’t get all these appeals?

      >> MM: Baloney.

      Odd from the great anti patent person. Actually, it is true to an extent.

      Reply
      1. Does anybody else realize that the more it becomes a system where you need big $$, the more it is like a third world country

        Last time I checked, it doesn’t require big money to obtain a patent in most of the world’s poorest countries.

        I also wouldn’t have a problem with reduced fees for those controlling interests who can prove they are indigent and in need of a handout. Maybe the PTO can offer loans to such people in exchange for a percent of any profits resulting from the patent (a joke — I’m just innovatin’ another “biz method” for ya’ll).

        Reply
        1. >>Last time I checked, it doesn’t require big money to obtain a patent >>in most of the world’s poorest countries.

          Examiner Mooney there was a larger point.

          Reply
        2. What an amazing point to make.

          I am not sure what that has to do with pretty much anything, but it sure sounded impressive.

          I bet his mommy was proud.

          Reply
      2. I think it is already a two-tier system.

        It currently is a two-tier system, in that the examination system enables anyone to get a patent based primarily upon the merit of the patent application, but where enforcement and defense critically depend on how much money each party has to spend.

        But to date, the system has resisted efforts to alter the process based simply on money. Indeed, small-entity and microentity fee discounts are intended to promote access in opposition to this fact.

        And yesterday I ran across this interesting section of 37 CFR:

        §1.102: Advancement of examination.

        (a) Applications will not be advanced out of turn for examination or for further action except as provided by this part, or upon order of the Director to expedite the business of the Office, or upon filing of a request under paragraph (b) or (e) of this section or upon filing a petition or request under paragraph (c) or (d) of this section with a showing which, in the opinion of the Director, will justify so advancing it.

        A mandate to process applications “in turn,” i.e. strictly according to the docketing process and with very limited exceptions, seems contrary to any policy that allows applicants to get expedited service simply by paying more.

        Reply
    3. wealthy players can pay more for better service, and to tilt the system in their favor.

      Is this a general issue you have with capitalism, David? Or is it just a specific feeling you have about the patent system?

      Reply
      1. The PTO examiner Mooney is not part of capitalism. It is a government agency meant to serve the public.

        Man, it just flows out of your mouth like river.

        Reply
        1. Don’tcha know NWPA? Donc’tcha know that when we are all part of the government that all our problems will be solved? That when we the people become we the commune and the power and the people are united and that we all come to understand what communism means, we would all get down on our knees and pray with Jane. No more unemployment, no more rich people, tear down that class structure and make everyone “equal.” From each according to their ability, to each according to their needs. Utopia is just a clenched tight eye away. Never mind reality, never mind actual human nature, never mind Adam Smith – trust the government, trust the monitors of the monitors.

          /eye roll

          Reply
      2. And Milly, tell us if you would have a problem if you call the police with a 911 emergency and you get a prompt to enter your credit card number to go to the head of the queue?

        What about it Milly. Milly Mor0n examiner.

        Reply
  12. The number of appeals pending 10 months or less is decreasing while the number of appeals pending 14 months or more is increasing.

    Maybe less cherry picking by the APJ’s would help. Put all the appeals in the queue with the oldest first in line and the newest last in line. Dispense each appeal one at a time to the APJ’s, with the oldest being dispensed first of course. When they’ve decided the appeal, dispense the next oldest one. And so on.

    link to uspto.gov

    Reply
    1. But is not such cherry picking crucial to managing the impression that the Office wants to have with the public?

      Is that not a justifiable reason to allow cherry picking?

      Reply
      1. is not such cherry picking crucial to managing the impression that the Office wants to have with the public

        You tell us, Billy. After all, nobody is better at public relations than you.

        Reply
      2. I’m not sure what impression with the public they are trying to manage, but the APJ’s of the PTAB should not be exempt from docket management requirements. Maybe they can have some of those paralegals who are surging the net, going to the movies, doing their laundry, etc. help them out.

        Reply
        1. ouch.

          (but there is no scandals at the Office – these are not the droids you are looking for)

          Reply
        2. The APJs have counts about like the examiners.

          Reply
          1. Prof Crouch ran a post awhile back mirroring the end-loading concern that examiners are accused of, so it would not surprise me in the least to hear that APJs have a similar “metric.”

            Reply
    2. One person’s cherry picking is another person’s triage.

      Reply
      1. When “triage” becomes habit and repeats itself year after year, then you cannot really call it triage.

        See the graph from Prof. Crouch on the year after year end loading effect and take off those examiner-goggles.

        Reply
        1. Cherry picking is a different issue from end loading, but I agree that they’re both problems.

          “take off those examiner-goggles” That comment makes me want to point out a curious similarity. All most all of those new APJs they hired were not former examiners and supposedly had extensive experience at law firms in patent prosecution and litigation. Yet the production system is essentially the same as that of examiners so you see the same pattern of end loading that you commonly see with examiners at the end of the fiscal year. Seems to me that there is a fundamental failure in the production system to mitigate a universally common human trait, procrastination.

          Reply
  13. “Those late-issued patents have the potentially of being disruptive to marketplaces that have developed and grown in the absence of an issued patent.”

    From the most recent statistics I’ve seen, 90+% of applications are filed without a non-publication request. So “marketplaces” are certainly on notice by publication of patent applications in the vast majority of cases. If you’re “developing” and “growing” some technology with knowledge that there’s a patent application that potentially covers that technology, but is sitting in the PTAB’s backlog, you really have no right to complain if it turns out that the patent issues and covers what you’ve “developed” and “grown” while the appeal is pending.

    Maybe the PTAB can expedite, sua sponte, all ex parte appeals in applications in which a non-publication request was filed, to address any concerns.

    Reply
    1. wow, only 10% are using the non-publication request route…?

      I get that any app that will be seeing a sister foreign filing may forego the path out of shear ease, but that still means that many are not using the best tools available for their clients.

      Reply
        1. Dennis,

          Look at the patents issued to Google and Nvidia as two big name examples of applicants that are way over the 10% non-publication mark. A quick and dirty way to check this is the percentage of issued patents that are B1 documents versus B1+B2. Sort them based on filing date to see the trend and extrapolate.

          Reply
    2. If you’re “developing” and “growing” some technology with knowledge that there’s a patent application that potentially covers that technology

      ROTFLMAO.

      Seriously?

      Reply
      1. I’m currently monitoring about 15-20 apps of our two main competitors that deal with technology that we are working on. Some of the claims would be very problematic to us if they were granted. We don’t think they’re going to get any of them as they are currently pending, but we’re keeping our eyes on them and considering our options just in case they are allowed.

        You don’t do something similar for your clients, Examiner Mooney?

        Keep up the record breaking outstanding quality work you’re doing over there examining protein bits and DNA fragments.

        Reply
        1. Would you file a post grant review if they get granted?

          Reply
        2. Malcolm’s “advice” to his clients is captured in his insightful post:

          Dear client, the fact that you are paying me makes me roll on the floor and laugh my Assets off

          Reply
        3. Of course companies monitor applications of their “main competitors”.

          I’m just laughing at the idea of monitoring every application (note: not pending claims) that could “potentially” cover your “technology” in the instance where your “technology” is some information-processing horseshirt.

          We don’t think they’re going to get any of them as they are currently pending

          Why not? I thought “appeal!appeal!appeal! was the solution to every rejection.

          Reply
          1. “Why not? I thought “appeal!appeal!appeal! was the solution to every rejection.”

            You are getting even s#ckier at this. We don’t think they’re going to get any of their claims as currently pending allowed, even if appealed, because the prior art is close, their attorneys are low rent hacks, and their approach so far has been the typical “add some more words to the claims and argue the prior art doesn’t have them, and then file an RCE to try to work with the examiner when the examiner just cites yet another reference allegedly including the words we added and combining it with the references already relied upon.” We’d be perfectly happy for them to pursue that strategy for the entire 20 year term.

            “I’m just laughing at the idea of monitoring every application (note: not pending claims) that could ‘potentially’ cover your ‘technology’ in the instance where your ‘technology’ is some information-processing horseshirt.”

            Companies can choose to do it, or not. But what they can’t do is complain that they’ve “developed” and “grown” a technology that turns out to be covered by a patent that spent 7+ years at the PTO before issuance because the patentee went through the typical appeal-reopen-appeal-reopen-appeal-wait 3+ years for decision that is not atypical for a patent to go through.

            Reply
            1. what they can’t do is complain

              I’m pretty sure that they can complain, and a lot more besides.

              their attorneys are low rent

              Ah, yes. More money means better service. Gee, that sounds familiar.

              Reply
              1. “I’m pretty sure that they can complain, and a lot more besides.”

                What is their complaint exactly?

                “Ah, yes. More money means better service. Gee, that sounds familiar.”

                You get what you pay for. I’ve reviewed every OA and every response in these applications and while our competitors may be saving money on “outside counsel spend” they are p!ssing every dime that they are spending down the drain as the firms they’re using can’t do anything except add more words to the claims and argue the references don’t have the added words. Like I said, we’d be happy for them to pursue that “strategy” for the entire 20 years if they choose to.

                Reply
              2. Malcolm has no concept of finances or dollar earned or value of money, because, well, you know, “grifters” or some such thing.

                Reply
              3. the firms they’re using can’t do anything except add more words to the claims and argue the references don’t have the added words

                Right. But your firm can do so much more. In your own imagination, anyway.

                Reply
          2. BTW, we have some applications that cover our technology on appeal. We reviewed the prior art, we put the claims in the narrowest form we were willing to accept, and appealed. One of the rejections is over our own prior art, so if we lose that one we aren’t too worried. The other rejection is over prior art that is not from our competitors. If we lose that one, we’re pretty confident that our competitors won’t be able to get a claim any broader than we are seeking, and if they do manage to get such a claim (which we highly doubt), we think we have a good invalidity position.

            This is all pretty standard practice, Examiner Mooney. Take your nose out of that peptide application you’re examining and pay attention.

            Reply
              1. I just love your wonderful stories, AAA JJ. Your perpetually winning ways are truly an inspiration to the patent world, provided we have any reason to believe you (which we don’t but, hey, let’s not dwell on it).

                How’s the movement going to impeach judges who use the term “monopoly” to describe patent rights going, by the way? That was one of my all-time favorite super serious proclamations of yours. Any progress on that front?

                Reply
              2. “I just love your wonderful stories, AAA JJ. Your perpetually winning ways are truly an inspiration to the patent world, provided we have any reason to believe you (which we don’t but, hey, let’s not dwell on it).”

                You’re funny. The examiner pretending on a blog to be an attorney.

                “How’s the movement going to impeach judges who use the term ‘monopoly’ to describe patent rights going, by the way? That was one of my all-time favorite super serious proclamations of yours.”

                So from my “serious proclamation,” on a blog, that judges who don’t understand the law should be removed from the bench, you’ve concluded that I’m starting a “movement”? What further proof does anybody need that you’re a examiner. Pretending to be an attorney. On a blog.

                “I think MM is mad you are calling him an examiner.”

                If the shoe fits…

                Reply
              3. my “serious proclamation,” on a blog, that judges who don’t understand the law should be removed from the bench

                Except that wasn’t your proclamation, AAA JJ.

                But now you seem to be suggesting that you were only joking when you made your assertion about judges who use the term “monopoly” when discussing patents. You didn’t really think those judges should be impeached. You were just making a funny.

                Like Billy’s “pogroms” and the “Gestapo” at the USPTO. And Randy’s “death squads.”

                Sooper funny stuff!

                Examiner

                You called me “an Examiner”! Oh noes! Too bad you’re wrong. Also, pretty efin du mb but, hey, we know that you try hard.

                Reply
              4. “Except that wasn’t your proclamation, AAA JJ.”

                Feel free to find my “proclamation” and quote it here, Examiner Mooney.

                “But now you seem to be suggesting that you were only joking when you made your assertion about judges who use the term ‘monopoly’ when discussing patents. You didn’t really think those judges should be impeached. You were just making a funny.”

                Never used the term “impeach” in my “super serious proclamation,” Examiner Mooney. Again, feel free to quote my “super serious proclamation” that I’m starting a “movement” to “impeach” judges who call patents monopolies.

                “Too bad you’re wrong.”

                I know you are, but what am I?

                Reply
        4. “We don’t think they’re going to get any of them as they are currently pending,”

          Sounds awfully lot like an excuse to develop and grow some technology.

          Reply
  14. Not a prosecutor, but I would think many applicants are perfectly fine with the long delay and then getting patent-term extension (or delaying out until they are told the rejection has been maintained). Being able to expedite makes perfect sense to me. Those who actually want a quick appeal, should be be able to get it. Those who don’t and don’t mind waiting can. Somewhat similar to deferred examination but in the appeal context, isn’t it?

    Reply
    1. “…I would think many applicants are perfectly fine with the long delay and then getting patent-term extension…”

      I love PTA.

      Reply
      1. Yup. The PTA. One great organization to belong to.

        ‘specially for inventors and their counsel.

        Reply
    2. Agreed.

      Long delays, compensated by term extensions, are good for some patents where the value of the patent increases over time.

      Reply
  15. One thing to keep in mind is that if a prioritized appeals program became popular enough, it could get to the point where enough people are buying into it that either (a) the prioritized queue never empties, thus requiring payment of the fee if you ever want your appeal considered, or (b) the prioritized queue becomes so long that the benefit becomes negligible. (Whether it’s a or b depends somewhat on how the PTAB would handle docketing the two types of appeals.)

    To compare to Track One and other special cases for examiners, most examiners don’t have any special cases awaiting an action at any given time, and so when a Track One case hits their docket, it is guaranteed to get picked up pretty soon after being docketed (it’s due by the end of the next full biweek after docketing, if it’s the only special case pending). But if Track One became super popular, examiners would have tons of them sitting around, and they would only be required to move one per biweek, thus defeating the purpose of the program.

    Reply
    1. Good point Apotu – and then throw in the fact that the people who are (already) charged to use special dispatch are exactly the same people who now have the added LEGAL (different) form of special dispatch to contend with in the form of the AIA special post grant mechanisms….

      deck chairs, they be a moving…

      Reply
    2. That’s right. There is only so much demand that the PTAB can handle. I would expect that it should be <5% of appeals in order.

      Reply
    3. IIRC the PTO can limit Track One to 10,000 apps per year.

      Reply
  16. which means that those not paying the “shake down” fee will have to wait even longer to have their appeals decided

    Reply
    1. That is a good point, Fish – time gained by someone necessarily means time lost by another.

      And yet another reason to cringe when Money Spent appears as some form of answer: the sport of kings and all that…

      Reply
    2. Would you still object if this were “cost neutral” as to all appeals. By this, I mean lowering the cost of standard appeals to account for extra earnings made from the accelerated appeals?

      Reply
      1. Isn’t all “costs” already supposed to be cost-neutral in that the power to set costs given to the USPTO under the AIA had a very strong (albeit seemingly invisible) caveat that the costs so set still had to balance out in the aggregate?

        It appears that you are offering something that already should be present…

        Reply
    3. those not paying the “shake down” fee will have to wait even longer to have their appeals decided

      But surely some of those folks are “parkers” and habitual heel-diggers who are/were gambling on some magical change in the patent laws which will turn their rightfully rejected j nk into platinum, or just waiting for someone at the PTO to blink. There’s no rush for those people, and they aren’t going to starve in the meantime (on the contrary, they’re quite wealthy compared to the average person).

      Reply
  17. It currently costs $1,600 ($280 filing, $600 search, $720 examination) for a large entity to get an examination of a newly-filed application.

    Why should my client have to pay $7,800 ($800 notice of appeal, $2000 appeal forwarding, $5000? appeal expediting) just to have a rejection reviewed by the Board in a timely manner?

    I don’t think this will provide much value to my clients. If my client wins at the Board and we get an allowance as a result (an allowance almost always follows a reversal), my client will receive, in patent term extension, the time the appeal was sitting at the Board — right now, that is about 3 years. If we are right and the Examiner is wrong, 3 years added to the tail of my patent term is likely much more valuable that getting the application allowed 3 years earlier. This isn’t always true, but it is definitely something to consider and discuss with your clients.

    Reply
    1. completely agree – and the trick here is noting for which types of applications such end-loading with PTA favors (and which types of applications this type of gaming provides no real relief).

      This is not by accident.

      Reply
      1. the trick here is noting for which types of applications such end-loading with PTA favors (and which types of applications this type of gaming provides no real relief).

        Tell everyone what you’re talking about, Billy. Spit it out in plain English. Ask your mommy to help you.

        Reply
        1. zzzzzzzzzz

          Malcolm – try at least try to say something meaningful. Otay pumpkin?

          Reply
        2. It is apparent that Malcolm’s dealing with total picture claim drafting has affected his ability to see the big picture, or to employ any sense of critical thinking….

          Reply
          1. the big picture

            LOL. Just spit it out, Billy. Don’t fight it. Use your best English and just spit it out.

            the trick here is noting for which types of applications such end-loading with PTA favors (and which types of applications this type of gaming provides no real relief).

            Apparently it’s so “tricky” that Billy is incapable of performing the “trick” himself.

            What’s the problem, Billy?

            Reply
    2. Why should my client have to pay $7,800 ($800 notice of appeal, $2000 appeal forwarding, $5000? appeal expediting) just to have a rejection reviewed by the Board in a timely manner?

      I don’t think this will provide much value to my clients.

      You really do seem to complain a lot about your troubles at the PTO.
      Let’s see the sorts of of claims your clients are seeking and maybe we can help you.

      Are you still confused about the fact that a “process” is not eligible per se merely because it recites a “process”? You seemed to be confused not too long ago. Have you figured the facts out now and advised your clients appropriately or are you still in the biz of gambling that your fantasy claims are going to suddenly become the cat’s meow because your lobbyist has a new haircut?

      Reply
      1. Let’s see the sorts of of claims your clients are seeking and maybe we can help you.
        How many times have you asked me (or anybody else) that question and they have provided you with a satisfactory answer? How many times have people asked you a similar question and you provided a satisfactory answer?

        The answer to both questions is ZERO. Why then, do you keep asking the question when you already know that you won’t get the answer you are (supposedly) looking for? Have you ever contemplated the ethical issues of you (or anybody else) discussing your (or their) client’s claims in a public forum? Are you so bereft of ethics that you continue to ask?

        You really do seem to complain a lot about your troubles at the PTO.
        You really do seem to complain a lot about the patents that issue from the PTO. So?

        Are you still confused about the fact that a “process” is not eligible per se merely because it recites a “process”?
        Are you still confused that I never used the phrase “per se” in my comment to which you are referring? Are you still confused that 35 USC 101 states “[w]hoever invents or discovers any new and useful process … or any new and useful improvement thereof, may obtain a patent therefor”?

        you still in the biz of gambling that your fantasy claims are going to suddenly become the cat’s meow because your lobbyist has a new haircut
        I wasn’t around in 1952 when the statutory language was enacted so I didn’t have a lobbyist at that time. BTW — aren’t you due to post claims from several recently issued patents and start b’tch’n and m’n’n about them being allowed? Kind of defeating your comments directed towards my USPTO complaints and your comments about me being in the “biz of gambling” with respect to this technology space.

        You are a funny guy MM … funny in a sad way, but still funny.

        Reply
        1. Are you so bereft of ethics that you continue to ask?

          That was a rhetorical question, right?

          ;-)

          Reply
          1. That was a rhetorical question
            Yeah, yeah … that’s the ticket … it was a re-tor-rect-ical question … using my best Tommy Flanagan voice.

            Reply
        2. Are you still confused that I never used the phrase “per se” in my comment to which you are referring?

          Nope. But apparently you’re confused about the subject that is being discussed which is: you don’t understand subject matter eligibility.

          Are you still confused that 35 USC 101 states “[w]hoever invents or discovers any new and useful process … or any new and useful improvement thereof, may obtain a patent therefor”?

          Nope. Sadly for you, that passage doesn’t mean that every new and useful claim that you can characterize as “a process” is eligible for patenting. On the contrary, we know that many, many such “processes” are ineligible. So why do you keep pretending otherwise? What’s the point of doing that?

          Let’s see the sorts of of claims your clients are seeking and maybe we can help you.
          How many times have you asked me… that question

          Less times than the number of times you’ve pointlessly complained here about your imaginary unidentified claims being rejected “improperly”. You might as well be ranting about all the times you’ve been arrested unfairly without ever telling anybody the exact circumstances which led to your arrest. What’s the point? Therapeutic for you, perhaps?

          aren’t you due to post claims from several recently issued patents and start b’tch’n and m’n’n about them being allowed

          There’s no deadline for that. It happens when it happens. You should try it sometime. It’s easy. Then you might appreciate why nobody really cares about all your sooper awesome j nk claims that allegedly aren’t getting granted quickly enough.

          Reply
          1. you don’t understand subject matter eligibility
            I don’t know … I’ve eventually overcame 100% of the 35 USC 101 rejections I’ve faced … and CLS Bank won’t change it.

            So why do you keep pretending otherwise?
            When will you stop lying about my positions? Just to make it clear, so there is no ambiguity, I’m calling you out as a liar.

            Less times than …
            Still having problems understanding the ethical issues involved with an attorney talking in a public forum about the specifics of their client’s case before the USPTO? What a tool …

            You should try it sometime.
            I’m still waiting for you to identify what you think is a good patent.

            Reply
            1. You are making the mistake of engaging in an interaction with Examiner Mor0n Milly.

              Just don’t.

              Reply
              1. I’m sorry, Night, but MM is excellent on 101. You, however, do not seem to grasp the essentials.

                Have you answered my post regarding the new and unobvious poem?

                Reply
              2. poem…

                (sigh)

                (and yes, Ned thinks that someone being “excellent” on 101 seriously impugns that someone)

                Reply

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