Thanks to Jim Hallenback for letting me re-post this (it is not legal advice). This is going to be a mess for a while and practitioners need to watch for unintended consequences.
As a follow up to my email from Thursday regarding Post-Alice activity at the USPTO, I first want to thank those of you that have responded. If you have yet to respond, I am still interested in hearing from you, but again remember not to share any confidential or privileged information.
Based on the information I have gathered in recent days, I submit the following update.
The Office believes it has a continuing obligation to examine all cases that are prior to issuance, even if in an allowed state. This may not be a change in Office policy or procedure, although it seems this may be the first time this is being done based on a court case issued after issuance of a Notice of Allowance.
Examiners were asked to look at their own cases that were/are in an allowed state. SPE’s and Tech Center experts were available/involved. So contrary to what some have reported, it does not sound like there is a select group reviewing all allowed applications. The phone calls are being given as a courtesy, which I believe is prudent and of benefit to applicants.
The standard being applied is that outlined in the Preliminary Examination Instructions<http://www.uspto.gov/patents/announce/alice_pec_25jun2014.pdf>. From the information I have gathered, the Office of Patent Examination Policy prepared the instructions without specific instruction from outside of the USPTO, again contrary to rumor.
While I do not believe there are any technology areas of specific or targeted interest, there are certainly areas that are more susceptible or more likely to raise rejections under the recent Alice decision. For example, financial areas are more likely to raise rejections, while GUI’s are less likely. In particular, classes 700-707, 726, and 434 are getting a lot of activity. Other classes in the 700 range are likely implicated as well and in particular, class 705. I don’t have specific numbers of cases involved, but the USPTO takes pride in being a transparent agency and provides vast amounts of data with regard to their operations. I would expect that data, such as numbers of allowances that are being withdrawn and classes and tech centers involved, is identifiable and the USPTO will most likely be forth coming with this data in the near future. This data will be quite useful for counseling clients on timing for payment of issue fees.
Regarding Payment of Issue Fees
The Office will refund issue fees. See MPEP 1308.01. This is an exception to Rule 1.26 and I confirmed the Office will honor it.
Going a bit further down the rabbit hole, for an application filed with small entity status but the entity no longer qualifies, payment of the issue fee is point where the entity status is to be updated for payment of the proper fees. If a small entity pays the issue fee at the large entity amount, they are certifying they are no longer a small entity. If such an application is returned to prosecution, the large entity fees would then have to be paid. The trailing benefit of small entity status would be lost potentially costing applicants significantly more money in USPTO fees. In such cases where an issue fee is coming due and the involved technology is potentially within the realm of the new USPTO Alice instructions, it may be prudent to wait a bit to pay the issue fee to not only prevent the issue fee funds from landing in limbo, but also to avoid losing small entity fee status.
Kindest regards,
Jim
Chair, AIPLA Electronic and Computer Law Committee
James D. Hallenbeck
Shareholder | Attorney
Schwegman Lundberg & Woessner, P.A.
1600 TCF Tower<image002.gif>121 South Eighth Street<image002.gif>Minneapolis, MN 55402
Anyone else reminded of the “Reject-reject-reject” era high-quality graph touted as evidence of the the “improvement” in examination by the Office in the pre-Tafas era?
You know, the chart that showed an historical grant rate of about 70% nose-diving down to the 40-30% range with NO factual underpinning as to why the drop occurred?
(the same graph that mirrors the explosion in pendency across each of the various Titanic decks of first action, second action, RCE, and appeals – that is visible if you take the “quality” graph, flip it upside down and translate it in time to match processing time?)
History repeats.
I submit the actions are more dramatic than what is being reported by PTO, which always tries to downplay their behavior; here is a count of patents issued in class 705 in the past 5 weeks:
192 (7/1);
181 (7/8);
184 (7/15);
193 (7/22);
and…. on 7/29 just…. 89 or down 50% with no explanation!
methinks games are on here – I have not down check of counts in related classes
Great analysis. I wonder if it would be possible to gather a little more data on this – maybe go back an additional month, and also to update with the current week. This is fascinating stuff!
Looks like you’re right. 1.27(g)(1) says the small entity status stays in effect until the issue fee regardless of actual change in status.
“Going a bit further down the rabbit hole, for an application filed with small entity status but the entity no longer qualifies, payment of the issue fee is point where the entity status is to be updated for payment of the proper fees. If a small entity pays the issue fee at the large entity amount, they are certifying they are no longer a small entity. If such an application is returned to prosecution, the large entity fees would then have to be paid. The trailing benefit of small entity status would be lost potentially costing applicants significantly more money in USPTO fees. ”
Huh!!!!!
Am I missing something? When an entity becomes large, it should file a change in status and fees thereafter will be large.
The note here suggest that one can continue to pay small entity fees while a large entity throughout prosecution, updating the status only when paying the issue fee. Is this truly correct? It boggles the mind.
Yes it is. See 37 CFR 1.57 (e) “once established, remains in effect until changed pursuant to paragraph (g)(1)” and (g)(1) “New determination of entitlement to small entity status is needed when issue and maintenance fees are due.”
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