Patent Pendency: Reconsidering Expedited Examination

On September 19, 2009, Oleg Zaitsev filed his patent application directed to a computer-hardware implemented anti-virus system.  Zaitsev included a petition for accelerated examination along with pre-examination search results and an examination support document explaining the validity of the drafted claims.

In a December 10, 2009 telephonic interview, the applicant (through his attorney) agreed to add an additional limitation into the independent claims via examiner amendment. On December 17, 2009, the examiner from Art Unit 3685 issued a notice of allowance. The patent then issued February 2, 2010.

The less-than-three-month notice of allowance is especially important since patent applications from AU 3685 have an average pre-issuance pendency of over 5.5 years.

See Patent No. 7,657,941.

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The 2010 patent with the earliest application date is No. 7,673,565.  That application was filed in 1977 and is directed toward infra-red proximity fuzes for missiles. The US Department of Defense had stalled the processing of the application through a secrecy order.

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The 66,000 patents issued Jan 10, 2010 – April 27, 2010 had an average prosecution pendency of 3.8 years from filing or 4.8 years from the earliest US priority date. For applications with at least one non-provisional US parent application, the average pendency was 7.0 yeasr from the earliest US priority date.

35 thoughts on “Patent Pendency: Reconsidering Expedited Examination

  1. 35

    Third and last answer Malcolm.

    Put yourself in the position of somebody watching the progress through the EPO of a threatening app filed by an aggressive US competitor. Your client wants to make business and investment plans for the coming years, solidly based on a good assessment of risk (After all, instant issue of interlocutory injunctive relief from infringing acts is quite common, at least in Europe).

    In such routine circumstances (as likely to occur as that you are faced with an equally troublesome 54(3) reference), are you not then very happy about the harshness of the EPO view on whether his prosecution amendments (after he has seen your client’s emerging product) add subject matter?

  2. 34

    Of course, Malcolm, i agree with you that it is regrettable that your EPO counsel doesn’t advance prosecution amendments more aggressively. It all helps the EPO to greater complacency.

    But there is a pretty good reason for their lack of aggression, namely, malpractice suits.

    In fact, note how aggressively, offensively, your EPO counsel resists your instructions to make prosecution amendments. Here’s why.

    There are only three grounds on which to oppose a patent at the EPO, post-issue. One of them is Art 100(c), that a prosecution amendment brought in new matter. Opposition is common and Opponents run this attack whenever there was a prosecution amendment. They often succeed.

    Particularly piquant is when the new matter in in an independent claim. For Art 123(3) forbids any claim amendment after issue that widens the scope. Removal from claim 1 of the words that constitute the added matter will usually widen the scope of that claim, won’t they?

    Catch 22. Claim dead on issue, and the amendment that would cure its fatal illness is not admissible.

    Patent owner has lost everything (maybe after having validated his newly issued patent in all 36 Member States, with translations bought and paid for in most of them). Patent owner extremely angry. Ask Sara Lee if you doubt me.

    US counsel now enquires of EPO counsel how he could have allowed himself to acquiesce in the amendment strategy suggested to him during prosecution of the app, on the merits, in the EPO.

    EPO counsel would prefer not to be in such a hairy situation. Hence his aggression. Smell the fear.

    But, with good trans-Atlantic communication, it gets much easier. This is one reason why I post on this blog. I hope for as many gentle readers as possible. I thank you, Malcolm, for being well-informed, and for raising interesting questions in a civilised fashion.

    Next time you are prosecuting an app at the EPO, and your EPO counsel is diffident about amending claim 1 in the way you want, are you going to stamp your foot and insist? On your own head be it.

    Or might you instead note that diffidence, explore what lies behind it, and find a safer way forward, that still gets your client everything he wants?

  3. 33

    Hi Malcolm. it does seem harsh, I grant you.

    But you need to consider it in context.

    Take the European way of arriving at the scope of protection within the ambit of the issued claim. In a court of law, when trying infringement. Is that “harsh”.

    Why is that scope-finding so liberal? Because Europe has 36 Member States, almost as many languages as Member States, and hardly anybody is an English native speaker.

    So the claim means what it means, in substance.

    Imagine you are pending at the EPO and you re-write your app to overcome a novelty objection based on an earlier EPO filing, now published. You assure the Examining Division (ED), with all the authority you can muster, that your amendments have not introduced to the app anything that wasn’t already immediately and unambiguously derivable from the app as filed.

    But the ED disagrees. So you go to Oral Proceedings where you meet the Division. Between a proud Spaniard and a dour Swede is a lady Chairman from France who does not think like you do and, anyway, is not willing to over-rule her two colleagues.

    So you go to appeal. There you meet a Greek, a Portugese and an Italian.

    You get through to issue and your patent is opposed (on the ground, inter alia, that your amendments introduced new matter). At oral proceedings, you meet a Cypriot, a Dane and a Belgian.

    You appeal. The members of the Technical Board of Appeal are German, Icelandic and Turkish. You try again. You fail despite your English EPO counsel telling you that all twelve of them have been wrong all along.

    With a bit of imagination, you can begin to sense how it is that the EPO feels comfortable with a strict line on written description/new subject matter. One has to deal with it. Can you tell any stories of injustice, harsh EPO law stripping American inventors of their rightful inheritance and income?

  4. 32

    MD What actually happens is that the other fellow’s marginally earlier filings emerge as A publications, long after you committed to your as filed text. Either you are different, and you get a patent for everything that you have that’s novel over him, or you are in substance the same, and you get nothing.

    Maybe the EPO should chill out on their ultra-harsh “written description” requirement and allow applicants to draft around the intervening art, where appropriate. ;)

  5. 31

    telling me “In principle, it’s all the same”. Hooray. At last we agree. Isn’t that nice.

    No Maxie, you misunderstand me. I always take issue with your “patent law is universal” stance which typically tries to say “all principle is the same”. This is because the US is so, so much better than ROW (you know it’s true and you know that you are envious).

    If you are confused, it is because you choose to be. Vive la choice.

  6. 30

    A man after my own heart.

    Of course the “seriously contemplate” test flies only in special “selection invention” situations well-known to EPO folk. More usually, it is the much more exacting “directly and unambiguously derivable” test which rules the roost. IANAE, I confess, I was teasing you.

    The important thing about the EPC is that its jurisprudence is evolving Darwinistically, through a thousand or so Decisions every year, made by more than 20 Technical Boards of Appeal of equal rank, vying with each other for the purest line of legal logic. Currently, the flavour of the month is “Double Patenting”. On that legal issue, those Boards, and those who argue before them, coming from 36 Member States, will grab any argumentation they can, from wherever in the world they can find it, starting of course with the USA.

    Shame that the EPO Administrative Council can issue invitations to States to join the EPC only to “any other European State”. I am still urging that the Member States amend the EPC to delete that restrictive word “European” from Article 166(1)(b) and throw open membership to any State that fancies joining the party.

    But I do agree with you. The Asians will sign up to the European patent model long before the USA. That’s OK. Vive la difference.

  7. 29

    Perhaps novelty law is different in Europe. For example, consider the “seriously contemplate” test. If the reader of the other fellow’s earlier filing would “seriously contemplate” something within the ambit of your claim, then your claim, my friend, lacks novelty.

    Unless that something is disclosed or inherent in the earlier filing, that’s a 103 in the US. Make that rejection under 102 and many agents will traverse till they’re blue in the face, knowing full well that a 103 with the same text will immediately follow.

    You can’t just import individual aspects of one system into the other, because the other system isn’t designed to handle them. A pretty good argument, actually, in support of your proposal that the best way to harmonize would be a wholesale adoption of EP law and practice. Not that it would ever be politically expedient to do so, of course.

  8. 28

    IANAE, sorry if I can’t keep to the point. I was only thinking that each rival Applicant in the 18 month black hole between priority date and A publication is ignorant of what his rivals have filed so can’t draft deliberately to disclose and claim stuff that’s novel.

    What actually happens is that the other fellow’s marginally earlier filings emerge as A publications, long after you committed to your as filed text. Either you are different, and you get a patent for everything that you have that’s novel over him, or you are in substance the same, and you get nothing.

    Perhaps novelty law is different in Europe. For example, consider the “seriously contemplate” test. If the reader of the other fellow’s earlier filing would “seriously contemplate” something within the ambit of your claim, then your claim, my friend, lacks novelty.

    In the real world, Art 54(3) has worked just fine for this past 30 years, notwithstanding the efforts of Heinz Bardehle to muddy the waters (he’s a litigator) with his concept (neither fish nor fowl) of “extended novelty”, (half way between 102 and 103, you could say), to deal with the mischief you are perceiving. Heinz, IANAE, there is no mischief.

  9. 27

    At the EPO, the disclosure content of your A-published app as filed, no more and no less, is your absolute limit. I can assure you that it is very real indeed.

    Of course the disclosure of each application limits its respective scope. That wasn’t my point. Besides which, I thought we were talking about applying the “only-published-art” rule to the US system.

    My point is that there are nearly infinitely many ways to generate separate patents that cover the same single invention without meaningfully different scope, that can’t be cited against each other for novelty because they don’t technically anticipate and can’t be cited against each other for obviousness because they haven’t been published yet. They might all be owned by different people, so you could have to answer to several people for infringement of the same single patentable invention.

    That’s why you might want the obviousness rule to prevent the grant of patents that are obvious over previously-filed but subsequently-published applications, even though it’s not completely logical to use the word “obvious” to describe what’s happening.

    Sure, you might say you’d be in the same situation if your product was legitimately covered by a dozen patents, but at least a dozen people would have to invent different things before that happened.

  10. 26

    ping, yet again you confuse me. When I say “It’s all the same in principle” you say “Rubbish”. But here, you are the one telling me “In principle, it’s all the same”.

    Hooray. At last we agree. Isn’t that nice.

  11. 25

    Maxie,

    But if I do not spell things out, will you go away?

    OT, but we here in the states also have something about after a publication, the limits of an application are readily divinable as well. Even with continuations.

    It’s called “no new matter”, and it applies not to publication, but to submission.

    So once an app is published (the quo be gotton). Smart fellas can look at the application in whole and figure out the maximum claimable real estate. Whether that’s claimed or not is a different matter – the applicant claim too little (shhh for two years), the applicant claim too much (line up the invalidating reexam material and make ready for war). This getting ready can include both 102 and 103. Waiting for the pokey, widget-producing examiner need not be a constraint.

  12. 24

    Thanks for the thoughts, IANAE. In the context of Art 54(3) EPC, you assert:

    “There’s no real limit to how many valid patents you could generate to cover the same device, on the strength of a single patentable invention.”

    At the EPO, the disclosure content of your A-published app as filed, no more and no less, is your absolute limit. I can assure you that it is very real indeed.

    Third party readers of that A publication know it already, of course. So, with no continuations in Europe, the position till the end of the 20 year term is readily divinable, not only for the Exr and the prosecuting attorney but also for the public, immediately after the 18 month A publication.

    ping, your KSR point escapes me. You know I’m slow. You have to spell these things out more fully, if you want a reaction from me.

  13. 23

    hopelessly dominated as it is by A’s slightly earlier app?

    Hopelessly dominated? How do you mean? What he discloses and what he claims could be two very different things. Maybe he ended up abandoning his application or making a careless narrowing amendment, who knows? I might still be able to carve out some significant claim scope by putting in just enough obvious features to defeat a 102 and render the A reference nonexistent for the purpose of 103. There’s no real limit to how many valid patents you could generate to cover the same device, on the strength of a single patentable invention.

    It doesn’t have to be something as limiting as “yellow”. Maybe A discloses a generic car, and I claim a car with a 4-cylinder engine, a car with a 6-cylinder engine, and a car with an 8-cylinder engine. None of those engine types are disclosed or inherent in A, so A cannot anticipate. The scope of my claims is not meaningfully limited, and the examiner is powerless to reject them over A.

  14. 21

    Help me will you IANAE. You write:

    “The problem is what happens when the primary reference for 102 is itself not citable for obviousness, and the difference is something as simple as using a bolt instead of a screw, or painting the thing yellow”

    I don’t see a “problem”. If you were B, the inventor of “yellow” or “bolt”, how much are you going to go on spending on your doomed app, hopelessly dominated as it is by A’s slightly earlier app? And if you do go on spending, well, so what?????????

    But if you were B, and the inventor of “yellow” or “bolt” at least you get something commensurate with your contribution to the art. And maybe new “yellow” turns out to be a goldmine, like the legendary squash ball that is “blue”.

    Either way, no cause for A to grumble, no cause for B to grumble, no cause for Joe Public to grumble.

    Your go.

  15. 20

    6,

    It’s way more than 10K patents in those subs. 709/224 alone has 10K. And they’ve listed another dozen notoriously bad subs in addition to that one. And yes, we all use key words in a sub before doing the rest of the art flipping, but the progression is this:

    L1 = sub and (narrow key words)
    L2 = sub and (a little broader key words) not L1
    L3 = sub and (all key words) not (L1 or L2)
    L4 = rest of sub not (L1 or L2 or L3)

    That has not been shown in the search logic. What has been shown is a key word limitation of good subs down to y hits which was then tweaked to x hits where x

  16. 19

    I’ll fall on my sword just after this post.

    I agree with Herr Three that 102(e) art should not under any reasonable scheme be permitted for use in obviousness rejections. I’ll take the EPC “novelty-only” approach to that art for $800, Alex.

  17. 18

    written earlier but published later

    Oh, yeah, that thingy, yeah, we don’t got a patent on it ourselves, but our competitor do. Why that was conventional, yeeeaahh, That’s the ticket, conventional I say.

    Trust me, I’m Tommy Flanagan.

  18. 17

    Max, the problem isn’t so much whether we choose to found 103 on primary-reference-plus-secondary-reference as in the US or primary-reference-plus-conventional-knowledge as in the UK.

    The problem is what happens when the primary reference for 102 is itself not citable for obviousness, and the difference is something as simple as using a bolt instead of a screw, or painting the thing yellow.

  19. 16

    Jules thanks for the posting, but when you write:

    “because a claim uses different words, or phrases things grammatically different, those can be reasons why a 102 is not applicable and a 103 is”

    you lost me. Take a claim. Any claim. It has a date relative to which its patentability over the state of the art is to be judged. The state of the art is everything that has been made available to the public, up to that date, by publication, use, written or oral, or in any other way. If a reference was made available to the public before the date of the claim, it is available for use in obviousness attacks. Otherwise not. It doesn’t get any simpler than that.

    Mind you, when I find a publication from an industry leader, written earlier but published later, that reports a particular method as being “conventional” and I need that conventionality as part of my obviousness attack, then I’m going to cite the late publication as evidence that contributes to my argument, that the method was already conventional, at the date of the claim.

    Does that help?

  20. 15

    “Now me, I could never understand how it can be fair to Applicant, to apply against his claim, under 35 USC 103, that belatedly published stuff which nobody except the respective inventor knew about, before Applicant filed.

    Try it. Open your mind and admit it as a possibility. Once you get used to the idea it is deadly simple, even for inventors and judges. And it works.”

    I am trying, MD, but I am having trouble getting over my own view on the matter. Even though other publications arrive after the filing of a patent, the filing date of the publication is evidence that a certain art was moving in a certain direction at a certain time. That is also why I see no problem with 3+ reference combinations. Sometimes the art reads like a map of evolution in a particular art. So for a guy to come along and claim something that appears to logically follow the evolution, they are claiming something obvious.

    So now that I’ve gotten my view out of the way, let me consider yours. You’re essentially saying 102 should use later-published art with an earlier filing date, but 103 should not. I don’t see why there should be such a distinction. It comes down to the language of the claims. Just because a claim uses different words, or phrases things grammatically different, those can be reasons why a 102 is not applicable and a 103 is – because a lawyer can argue the crap out of a word or phrase. In my view, 103 covers even those seemingly minor (but important) gaps, and therefore should not be subject to a smaller range of “prior” art.

    Taking the argument one step further (too far?), applications for patent that occur later than your filing might even be used to show how art was evolving. But the line has to be drawn somewhere, and this scenario seems to cross it. Even so, there was a case (I forget the cite, but I believe it was a Federal Circuit case) that affirmed the use of a later-filed application as a secondary reference in an ODP rejection as proper.

  21. 14

    Public Searcher DIP,

    While this is how many examiners search, this is not the standard to which the majority of pre-x searches are being held

    What standard would that be? And why the difference?

    Maxie,
    I’m too set in my ways to see your problem

    Just about says it all.

  22. 13

    Isn’t that the whole point, you ask, IANAE. To which I reply: I dunno.

    I’ve had things so simple, all my career, that I don’t even understand the question. I guess then that we will simply have to leave it at that.

  23. 12

    To which I reply: In your jurisdiction perhaps. But not in mine.

    Isn’t that the whole point of this exchange? The US isn’t even crazy about the same party owning two mutually obvious patents with the same priority date, unless they’re joined at the hip and share vital organs. The US statute basically makes all 102 art also 103 art, and I don’t think that system is ready for the intuitively compelling proposal that knowledge not available to a person skilled in the art should not render a claim obvious.

  24. 11

    IANAE writes “The thing is, if the same person files two applications with mutually-obvious claims, he has to file a terminal disclaimer, promise to only assign/assert the applications together, and so forth.”

    To which I reply: In your jurisdiction perhaps. But not in mine.

    Sorry IANAE, but after 30 years of EPC practice, I’m too set in my ways to see your problem. In my jurisdiction, all earlier filings are good to go, for novelty attacks, even the earlier EPO filings of the instant Applicant, whether that entity be IBM, Samsung, Philips, SAP, Toshiba or JAOI (TM). All very strange to an American reader, I grant you but, hey, let’s be even-handed out there, shall we?

  25. 10

    “1) The listed subclasses as having been manually reviewed on page 92 of the full file wrapper include US subclasses with tens of thousands of references. It is obvious that these were key word limited as shown in the strategy shown on page 93, but if that is the case these should not be in the manually reviewed section of the pre-x search.”

    Idk public. Sometimes I do a search of something with 3000+ and I kick it off with a keyword before flip flip flippin the same thing.

    “The search strategy is very limited. ”

    On the other hand they did do 10000 refs that are all supposedly closely related to what they need…

  26. 9

    “What’s the right answer?”

    Thoughts/experiences on how useful/effective these are?

    File 1.99s?

    Insert identical claims to get the Office’s attention and/or instigate interference?

    File “notices” in your own file notifying your examiner/the Office of others you believe yours anticipates and/or renders obvious (which is what both the OPLA and IAC advised me to do); which I’ve now done 3 times, covering 10 other still-pending apps?

  27. 8

    That point is simply to exclude from the art available for obviousness attacks the stuff at the PTO that has not yet been laid open to public inspection. Apart from that simple exclusion, the art is identical. And what could be more obvious than to exclude from obviousness that which the PHOSITA does not know about? How can that be “strange”?

    I’m completely on board with that sentiment. Something can’t really be obvious if it wasn’t actually known in the art at the time.

    The thing is, if the same person files two applications with mutually-obvious claims, he has to file a terminal disclaimer, promise to only assign/assert the applications together, and so forth. Why, then, would we allow those same two applications to spring into existence in the hands of two separate and unrelated parties, and mutually unfettered?

    It’s less a question of principle than a question of whether the system is set up to consistently incorporate the principle.

  28. 7

    I do a ton of pre-x searches for AE applications and this issued patent has several red flags just based on the search aspects. I do not know the legal implications of questioning the documented search, but I am curious about a few things.

    1) The listed subclasses as having been manually reviewed on page 92 of the full file wrapper include US subclasses with tens of thousands of references. It is obvious that these were key word limited as shown in the strategy shown on page 93, but if that is the case these should not be in the manually reviewed section of the pre-x search.

    2) The EAST based searching (starting on page 93) includes access to the IBM_TDB database. This is not possible. Only examiners have access to this database. The public doesn not. Therefore something is very fishy in this pre-x search.

    3) The search strategy is very limited. The progression of the L#s shows excessive limiting of the volume of art reviewed. While this is how many examiners search, this is not the standard to which the majority of pre-x searches are being held and I am very suprised at the approval given this one.

    Perhaps this is all bitter grapes because my cases seem to require much more work effort, but I would appreciate a bit more even handed handling across what is a very small department within the USPTO.

    I am happy to see someone other than just IBM availing themselves of this very useful means to garner patent protection though!

  29. 6

    ping, no beef, no lack of clarity. See IANAE.

    IANAE, thanks for the reaction. I reply:

    Different art, yes, up to a point. That point is simply to exclude from the art available for obviousness attacks the stuff at the PTO that has not yet been laid open to public inspection. Apart from that simple exclusion, the art is identical. And what could be more obvious than to exclude from obviousness that which the PHOSITA does not know about? How can that be “strange”? Hang on to the idea that 103 is to stop people getting patents covering matter that is lying in the road (ob via) of technological development, whereas 102 is for an entirely different, mutually exclusive purpose, namely, to adjudicate between rivals A and B who, unbeknown to each other, invent and file on overlapping non-obvious subject matter (this is something that happens all the time, I should observe). Both have made a non-obvious step forward in the art. Should they both get a patent on the same thing? Would this promote the progress?

    Obvious over one another. Whyever not. Why odd. A, who files first, gets everything that is not obvious and also new. B, who files later, gets all he asks for, all his non-obvious subject matter. The only stuff he doesn’t get is that which is not novel over the disclosure content of A’s earlier filing.

    So, that’s giving both A and B as much scope of protection as possibly one can imagine. That’s promoting the progress, isn’t it?

    Sorry to bore those who have read this before.

    Try it. Open your mind and admit it as a possibility. Once you get used to the idea it is deadly simple, even for inventors and judges. And it works.

  30. 5

    Now me, I could never understand how it can be fair to Applicant, to apply against his claim, under 35 USC 103, that belatedly published stuff which nobody except the respective inventor knew about, before Applicant filed.

    It’s not fair, really. But it’s also strange to have different art for novelty and obviousness purposes, and it’s at least mildly odd to allow two separate people filing a year and a bit apart to get patents that are obvious over one another.

    What’s the right answer?

  31. 3

    With cutting edge stuff, and an app that mentions the closest art, by rights there should be only one or two items on the search report, no?

    But with a long delay between the filing date and that on which the search was done, there ought to be more, namely, all that stuff which the drafter did not know was filed shortly before Applicant’s filing date, and then A-published a few months afterwards.

    Now me, I could never understand how it can be fair to Applicant, to apply against his claim, under 35 USC 103, that belatedly published stuff which nobody except the respective inventor knew about, before Applicant filed.

    No wonder folks want the USPTO to search immediately after their filing, and then never again.

  32. 2

    “All the prior art in the world consists of two patents and two patent applications? No non-patent prior art? No international prior art?”

    Does the applicant have to provide cumulative prior art in an ESD? If the application truly is cutting edge, I can see there only being 3-5 relevant pieces of prior art. Of course, if it’s not, there should be a whole lot more prior art out there.

  33. 1

    All the prior art in the world consists of two patents and two patent applications? No non-patent prior art? No international prior art?

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