Working through Old Patent Applications

The decision in Hyatt v. Lee (Fed. Cir. 2015) included a citation to a June 2013 letter submitted by then Acting Director Terry Rea to the Senate Judiciary Committee. The letter was submitted in a response to a Senate request for information regarding still pending patent applications filed pre-GATT.

Rea reported that 482 applications are still pending that were filed prior to June 8, 1995. That cutoff is important because those applications – if ever issued as patents – will be entitled to 17-year patent terms following the issue date.  Applications filed since that date are given 20-year terms that begin counting at the application filing date.

The letter goes on to list the serial number, inventor, assignee, priority date, and other information for each of the 482 applications.

Leading the pack is Gilbert Hyatt with 399 applications pending. Runner-Up is Personalized Media Communications (John Harvey) company with 38 applications pending.  The remaining ancient-application-owners are all smaller players with only one or two pending (as of 2013). These include UCB Pharma; Boeing; US Dept of HHS; Sanofi-Aventis; and US Smokeless Tobacco Company, as examples.

Although the letter does not so indicate, it is apparent to me that the data does not include applications kept from issuing due to secrecy orders.  On example is recently issued U.S. Patent No. 9,057,604 that was filed as an application in 1989 but did not issue till 2015 because of a secrecy order by the U.S. Government.  Since Rea’s letter, 30 of Harvey’s patents have issued. See link.

 

56 thoughts on “Working through Old Patent Applications

  1. 13

    […] Working through Old Patent Applications – The letter was submitted in a response to a Senate request for information regarding still pending patent applications filed pre-GATT. Rea reported that 482 applications are still pending that were filed prior to June 8, 1995. That cutoff is important … […]

  2. 12

    Of course this Hyatt case is very different than most cases. This case probably has more to do with the PR department and K street than a real problem.

    I looked enough at the prosecution history to say this: just put a few competent examiners on this with enough time (adjusted for the number of claims) and the problem would disappear.

    1. 12.1

      “..put a few competent examiners on this with enough time (adjusted for the number of claims) and the problem would disappear.”
      Indeed, that is what I had suggested to the PTO several times in the past, and they now seem to finally be doing it for Hyatt applications. [I wonder if it was due to PTO managers afraid of what the examiners union might say about special examiner work target adjustments, even needed reductions?]

      However, note that an examiner also needs considerable further time to find out which prior application specification of a byzantine chain of priority application claims [especially CIPs]* actually contains the requisite full 112 support for each current claim in each current application claiming its priority. Because that determines the first VALID priority date, and hence what prior art applies. That prior art may even be a related patent by the same applicant that issued more than a year before the VALID priority benefit date of the subject claim.
      Hence the PTO demand here for that clarification by the applicant itself in this special situation of so many chained CIP priority claims and so many claims.
      Although examiners rarely use it, they actually have quite broad authority for information demands via current Rule 105, and the Fed. Cir. has supported it. In Star Fruits S.N.C. v. United States (Fed. Cir. 2005) the Federal Circuit upheld the PTO’s “requirement for information” regulation, 37 CFR § 1.105. This case of first impression suggests that the PTO can increase its activity in the area of “requirements for information.” I believe there has been another such case since?

      *But I have even seen some applications falsely labeled “continuations” or “divisionals”[rather than CIPs] with substantive, material, specification additions or alterations, and, of course, the wrong oaths. I wish the PTO would go after such applicants more often.

      1. 12.1.1

        Even with the given unsavory character of Mr. Hyatt, “go after is absolutely the wrong connotation to be aiming for.

        Examination.
        On the merits.
        All else is smokescreen.

        Patents are a good thing. That’s why we have a patent system.

        1. 12.1.1.1

          Fine, I could have said instead: “Enforce the PTO Disciplinary Rules and apply sanctions for OED findings of false oaths, false priority claims, or miss-characterizing applications by ANY applicant.”

          1. 12.1.1.1.1

            I would agree, Paul, that knowingly misrepresenting a CIP as a continuation or divisional is material and should subject the prosecuting attorneys to discipline. Negligence may not be a complete defense, but it might reduce the penalty.

          2. 12.1.1.1.2

            I agree completely with this version.

            I am sure the APA – properly applied – and a healthy respect for the Rule of Law would take care of the situation without all the dust-kicking.

      2. 12.1.2

        I basically agree with anon. And 37 CFR § 1.105 is just another form of burden shifting usually. I.e., you want a patent, prove to us that it deserves a patent rather than the “unless” of 35 USC.

        Moreover, Paul it seems to me just looking through a tiny bit of the prosecution history that none of this is rocket science. That careful examination from the start would have sorted this out. And, when people do all this continuations then the PTO needs to put resources to deal with them and charge the appropriate fees. But, given what a mess this is now, maybe some burden shifting is needed to clear it up.

        Still, I have to believe that most of these problems are from management. They don’t see these things and react to them by shifting resources. I have worked with many examiners that are highly competent and highly intelligent that if put on these applications with the proper time allocation would be sure to provide fair outcomes and keep the situation under control.

        (Let’s face it. Problems like this may be partially from gaming the system, but the PTO has more resources than they need to handle these problems in a fair transparent manner.)

        1. 12.1.2.1

          Yes, that fully agrees with what I had been saying below as well as above.
          As to 37 CFR § 1.105, I pointed out to readers its existence and Fed. Cir. approval because it is apparently being used in some Hyatt applications, and approved. I did NOT suggest that I think it ought to be a normal examiner practice, and as far as I am aware it has not been. Nor are examiners trained or qualified to draft proper interrogatories.

        2. 12.1.2.2

          And of course, let’s not forge that a proper response to a 37 CFR § 1.105 request is : that information is not known or readily available – and that such requests are for factual matters (and not opinions or items of legality).

          1. 12.1.2.2.1

            a proper response to a 37 CFR § 1.105 request is : that information is not known or readily available

            And a proper response to a non-credible answer is to flush the application down the t oilet.

            1. 12.1.2.2.1.1

              Ends and means Malcolm – the means really do matter.

              As people have been attempting to tell you, nine years and running.

              Not that anyone could ever pick that up from your perpetual short script g-g-g-grifter “feelings” manner of posting.

  3. 11

    This story strikes me of scapegoating. I’d rather see a story title like, “Director Lee Initiates Patent Prosecution Reforms for the 21st Century.” (Of course, first someone would have to explain what patent prosecution is to Director Lee.)

  4. 10

    link to washingtonpost.com

    “A federal patent examiner racked up more than 18 weeks of pay last year for work he didn’t do, but his manager didn’t notice until he received an anonymous letter claiming the employee only showed up for his job sporadically and turned in work that was “garbage.”

    1. 10.1

      the new revelation is the most egregious example to surface so far of an examiner defrauding the government for work not done.

      Investigators for acting Inspector General David Smith documented how the examiner, whose job was to review inventors’ applications for patents, was paid $25,500 in fiscal 2014 for 730 hours he did not work.

      Oh my! $25,500! The horror. The horror.

      Just to put this in perspective, anyone who’s ever worked at a major law firm will know of several incompetent partners (at least) who have skimmed ten times that amount of money annually off the backs of their associates. But they “earned that right”, didn’t they? Sure they did.

      1. 10.1.1

        If you are in fact knowledgable of any such “wrongdoing,” you do know that you have an obligation to report such wrongdoing, right Malcolm?

        Or is this yet another manifestation of your self loathing of your so-called profession?

        You really do need to get into a line of work of which you can believe in.

        1. 10.1.1.1

          It does seem that if you hate all the people that surround you, you should consider being in a different profession. Plus, have you noticed that everyone in MM’s world is “incompetent” or “stealing” or “insert your favorite negative word here”? I’ve never seen such negativity from a person before. I certainly couldn’t work in a field where I believed everyone was terrible.

          1. 10.1.1.1.1

            I certainly couldn’t work in a field where I believed everyone was terrible.

            I don’t believe everyone is terrible.

            And I’m not defending the actions of this slacker Examiner. I’m just suggesting that, as government “fraud” goes, this is some extremely light chicken feed for the Post and its readers to work themselves into a frenzy over. It’s also piddling compared to the sorts of accounting games that are played in law firms at all levels. And, most importantly, the existence of a few lazy freeloaders in its ranks is utterly trivial compared to the genuinely consequential, systemic problems that the USPTO needs to address.

            1. 10.1.1.1.1.1

              Don’t run through the fields of rye, children.

              Malcolm has taken a break to not defend a piddling slacker.

            2. 10.1.1.1.1.2

              This is right MM. This is a minor issue. This sort of thing is never good and goes on in every place I’ve ever worked.

        2. 10.1.1.2

          Are you really suggesting that partners in big law firms never claim associate work product as their own and bill for it?

          you do know that you have an obligation to report such wrongdoing, right Malcolm

          I’m reporting it right now (to you anyway — pretty sure everyone else knows all about the practice, human nature, etc).

    2. 10.2

      Best comment from that WaPo article:

      It is critical for the future of our democracy to survive that such corruption be rooted and punitive measures taken for these American traitors.

      ROTFLMAO

  5. 9

    Leading the pack is Gilbert Hyatt with 399 applications pending. Runner-Up is Personalized Media Communications (John Harvey) company with 38 applications pending.

    So 90% of this ungranted junk is owned by two (LOL!) professional patent trollers who produce nothing but litigation.

    Awesome. Nobody could have predicted.

    Here’s an example of the ridiculous garbage the bad ol’ patent denyin’ PTO has already handed to Harvey (7,801,304):

    1. A method for controlling the decryption of programming at a subscriber station, said method comprising the steps of:

    receiving programming, said programming having a first encrypted digital control signal portion and an encrypted digital information portion;

    detecting said first encrypted digital control signal portion of said programming;
    passing said first encrypted digital control signal portion of said programming to a decryptor at said subscriber station;

    decrypting said first encrypted digital control signal portion of said programming using said decryptor at said subscriber station;

    passing said encrypted digital information portion of said programming to said decryptor;

    decrypting said encrypted digital information portion of said programming using said decryptor at said subscriber station based on the decrypted control signal portion; and

    presenting said programming.

    Try to believe it, folks. What a joke of a patent system. Bottom feeder “innovators” enabled by some true incompetents at the PTO. Then top everything off with this bizarre class of “patent everything” screechers who never saw a junk patent they couldn’t embrace.

    Some zillionaires get denied a patent and the screechers whine about “abuse of power”. The same zillionaires are granted reams of junk patents which they immediately use to file lawsuits (in Texas, of course) against hundreds of companies, all of which end up in the trash after the defendants waste millions and millions of dollars and what do we hear from those same screechers who are soooooooo concerned about “abuse of power”? Not a peep. Go figure.

    1. 9.1

      [apologies for formatting error — here’s the last bit in proper formatting]

      Try to believe it, folks. What a joke of a patent system. Bottom feeder “innovators” enabled by some true incompetents at the PTO. Then top everything off with this bizarre class of “patent everything” screechers who never saw a junk patent they couldn’t embrace.

      Some zillionaires get denied a patent and the screechers whine about “abuse of power”. The same zillionaires are granted reams of junk patents which they immediately use to file lawsuits (in Texas, of course) against hundreds of companies, all of which end up in the trash after the defendants waste millions and millions of dollars and what do we hear from those same screechers who are soooooooo concerned about “abuse of power”? Not a peep. Go figure.

  6. 8

    *non secret pre-GATT applications.

    William F. Friedman might still have more applications out there filed in the 1930’s considering the last one was only released in 2001 despite a 1933 filing date.

    1. 8.1

      Why was the one released from secrecy in 2001 — is that 50 years from the date it was declared to be a secret.

      Freidman was the guy who broke the Japanese code — right up there with Turing it seems.

      1. 8.1.1

        Likely, its pair record says it had its secrecy order not renewed in 1999. I think the modern record keeping of secrecy dates from 1949, and NSA predecessor Armed Forces Security Agency was founded in 1949. Executive Order 12958 put a bunch of restrictions on stuff over 50 years old. But there are exceptions. Crypto and Nuclear are the big ones, although there’s also a bunch of guidance ones.

        A fun search is searching for patents filed before 1970 and released after 2000. Pretty much either crypto, nuke, or guidance/drone related.

        There’s likely a whole stack of tangential nuclear patents which have been sat since the 40s and will never get out. But there’s special DOE rules really intended for that (plus 41 usc 2181).

        1. 8.1.1.1

          Well, I used to work on nukes as an engineer – MM III, still the frontline ICBM. Never filed any patent applications nor was asked even though I did some fancy stuff.

          1. 8.1.1.1.1

            Well yeah on the MM III, you’d have 41 usc 2181 banning most patents to do with the weapon itself.

            Plenty of related ones which might be secret dealing with the solid fuel or the guidance systems. IIRC the solid rockets are more or less the shuttle boosters.

            Not to mention the Cold war, so some of this might of been intentionally obscure due to secrecy.

            Otoh some of the ones released were ones dealing with tangential steam tech from the 40s.

            1. 8.1.1.1.1.1

              Well, Germany, and the people who pirated their technology after WWII. were for a very long time the only people who could put missiles into space or on target across the world. It is good that this technology is secret.

  7. 7

    ” Applications filed since that date are given 20-year terms that begin counting at the application filing date.”

    Dennis – The above quote from your post overlooks Patent Term Extension for PTO delay.

    I’ve forgotten when the patent term extension rules kicked in, but I think if its not June 8, 1995, it was not long after the change to 20 years from filing rules.

  8. 6

    Glad to see the Senate questioning why the PTO cannot get ancient secret pending applications disposed of. They are a serious economic risk.
    If the PTO management had ever enforced processing of ancient applications in the proper order of their claimed ORIGINAL filing date , including re-assigning them [as they finally did recently] to examiners who could actually check their alleged priority date validity, the massive and inexcusable Lemelson and Hyatt situations would not have occurred. Each new continuation, CIP or divisional of an old application should be taken up and acted on within only a few months of its re-filing date. Instead, the PTO allowed or encouraged these applications to sit unprocessed for years, and perpetuated statistical misrepresentations that these were “new” applications, while literally millions of other patent applications with much later filing dates were fully processed instead.

    1. 6.1

      BTW, only under PTO Director David Kappos (who was remarkably receptive to outside suggestions, even on weekends) was a real PTO clean-up effort on ancient applications finally initiated, in spite of years of prior complaints.

      As for the different issue of old applications under secrecy orders for many years, one problem I noted is that the attorneys who inherited responsibility for their prosecution had often never even bothered to ask to have the secrecy order reviewed and removed for obsolescence. Maybe they did not even know that is possible?

      1. 6.1.1

        Or known they existed. I worked at a company with patents under a secrecy order and never saw them (I never applied for a clearance). I’m sure there was someone who had responsibility for these, but I don’t know who that was.

        1. 6.1.1.1

          Agreed.

          We had one classified top secret crypto. Only one person in the department had that clearance. When he left — no one else could even look into the file.

          However, I think the company must have had some employees with the right clearance that could have reviewed the matter and provided the department with enough to make an inquiry.

          1. 6.1.1.1.1

            Ned, to sent to the PTO security branch a request for consideration of their removal if a secrecy order if it is no longer required all you need is the application number. You don’t need to look into the file, and of course should not.

            P.S. Any application that ancient should require at least a status inquiry by the attorney assigned to it anyway. [I would hope that firms do not have old un-issued application files lying around with no assigned attorney?] For all you know the PTO may have lost the file.

  9. 5

    list the serial number
    Since you appear to be old-school, let me instruct you a few finer points.

    Application numbers are written as:
    XX/YYY,YYY

    The XX is the series code. There are many series code including “29” for design patents, “60” & “61” for provisional, “90” for ex parte reexams, and “95” for inter-parte reexams.
    The YYY,YYY is the serial number
    The combination is called the application number. For reexams, it isn’t an application number but a “control number.”

    Don’t write “serial number” when you mean “application number.”

    1. 5.1

      That’s the kind of useful information for general readers it would be nice to see more of in the comments on this blog.

      1. 5.1.1

        No, it’s the kind of pedantic nonsense we need to see less of. Everybody knows what is meant by “serial number” so keep your pet peeves to yourself. Nobody cares.

    2. 5.2

      I have a question.

      Of what use is a serial number without the series number?

      If there is no use for a serial number without a series number, they of what importance is the serial number/application number distinction?

    1. 4.2

      I’m a little confused.

      I thought Examiner’s work on a quota system.

      If that’s true, what difference does it make how many hours they work?

  10. 3

    I notice that two of the applications are from Michael Boss of Boss patent fame, and that one of them was cited in the Cabilly interference hearing. Could be interesting for the biotech industry if these two ever see the light of day…

  11. 2

    I noticed that the image wrapper for John Harvey’s May 23, 1995 08/447,447 Application there is a 511 page special petition that was received March 7, 2005 and that references the SAWS program that was supposed to have been cancelled in February 2015 and yet probably still continues in secret.

    1. 2.1

      As previously pointed out Joachim, during the scuffle of “Oops, we do have a star chamber program called SAWS,” the Office openly admitted that SAWS was only one of such out of sight and out of control programs.

      You really don’t have to attempt to say that SAWS was not really discontinued when there is an open admission that other star chamber programs (how many…?) have been acknowledged to exist.
      Maybe the next “transperancy” battle would be to list each of these…

      That is, after the transperancy battle that Dr. Noonan initiated.

  12. 1

    It seems that many of these applications are involved in some sort of death struggle between the PTO and the applicant where neither will give up, and where the PTO will not allow case out of the PTO by constantly reopening prosecution.

    The latter seems wrong in principle in that there has to be some way to get out of the PTO and into the courts on some set of claims and rejections.

    1. 1.1

      Not all of these patent applications will have a full 17 year term if granted. In some cases applicants have made terminal disclaimers.

      It violates equal protection and due process if the PTO as a matter or policy or some group of patent officials secretly have decided to stall these patent applications for no reason except that they are old — a situation that may result from actions of the PTO and not from anything the applicant has done.

      1. 1.1.1

        Or even from those actions done by applicants for which the applicant has a legal right to do.

        Some people forget that the Office tried to change the rules on such things as the number of continuations and that effort was found to be illegal. See Tafas.

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