Earlier this week, one of my excellent patent law students (Lawrence Higgins) plowed through 64 sets of recent USPTO petitions decisions. The decisions came from a group of randomly selected patent applications with application serial numbers 11/900,000 – 11/999,999. The vast majority of petitions were granted (78%) although about 20% were first rejected before being later granted after the applicant provided further information or argument.
I categorized the petitions into groups. The largest group consisted of petitions requesting revival of an abandoned application. 25% of the petitions were revival petitions with 94% being granted. 22% of the petitions involved the applicant attempting to establish a priority date. The next largest category of petitions were petitions to make special. In this group, all nine of the petitions to make special were based on the inventor's age (over 65 years) and all were granted. The remaining petitions involved a hodgepodge collection of issues such as attorney requests to withdraw representation, patent term adjustment corrections, refunds, corrections, and republication. None of the petitions in our sample challenged a restriction requirement.
- I'm working on a more complete study of the petitions decisions data.
- Petitions are Available for Download Here
He is a good friend that speaks well of us behind our backs.
*_*
Man should be allowed to finish his or her thought. That way man would know my thought, and the “Value” of it.
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That which is striking and beautiful is not always good, but that which is good is always beautiful.*
iwasthere,
Iza pretty sure you don’t want the Office developin a body of agency law, they tried that with Tafas and were righteously smacked down.
So if My Patent wasn’t owned at the time by anybody and the decision was denied, and as usual My MAIL was being controlled. Then who has it. Can i get another copy? YAH think?
How come I was denied the petition? And then it was put back on as no decision?
Oh MM was there then.
In kafka land aka uspto petitions branch – when a petition is denied – it is often “denied and returned to the patent owner.” Therefore, expunged from the uspto records? Who cares about restriction petitions (very discretionary decision in any event). What about when a petition is made on a real point of law or application of a mpep (non-rule)? Those are the kinds of decisions you want uspto to disclose – so you can develop a body of agency law.
IANAE, I greatly appreciate the implication of youth. I was, however, referring to the business environment under which the petition was filed; not your typical corp.
It is depressing, and it is easy to argue that the claims have already been examined, but often yields no result – without an effective mechanism to challenge an adverse decision, there is no incentive to bend to the argument.
The stats vary. Some cases are certainly more deserving of restriction attention than others; but the ones of which I speak here are within or close to the 3/20 limits.
I probably harken from a patent world quite different from yours,
Really? You’re not as old as all that.
restrictions keep rolling in, even on the original claim sets…
Really? That’s depressing. I haven’t had that experience, but I don’t envy you it. Is it not straightforward to argue lack of undue burden to examine claims that the examiner has already examined together?
Also, I’m curious as to how many independent claims you tend to have in such cases, and how different they really are. In general terms.
I appreciate your thoughts IANAE. It was a single petition to test how effective an option it is; in response to very explicit requests from the office’s outreach to petition when there are problems – turns out they weren’t actually expecting people to listen to them…at least with respect to restrictions.
Your presumption regarding an old case from the mid to late 90’s in incorrect, however. I realize I probably harken from a patent world quite different from yours, but I often prosecute cases that have been being battled over for 10 years or more; original filings; and restrictions keep rolling in, even on the original claim sets…usually after Appeal (kicked back into prosecution by the Examiner with a restriction in many cases…)
A petition to revive for unintentional abandonment are only automatically approved within two years. After that it requires a showing. Just in case someone might have relied upon what Mr. Sereboff said above.
“If the search and examination of **>all the claims in an< application can be made without serious burden, the examiner must examine *>them< on the merits, even though **>they include< claims to independent or distinct inventions.”
A few comments about this:
Seems pretty much cut and dried – why we be not understanding this simple reading?
“If the search and examination of **>all the claims in an< application can be made without serious burden, the examiner must examine *>them< on the merits, even though **>they include< claims to independent or distinct inventions."
A few comments about this:
1. That rule is probably as much for the PTO’s benefit as it is for ours. It’s more efficient for them to examine claims together that can be examined together, and they have to pay the examiner for fewer counts due to the overlap in work.
2. That rule pretty much makes restriction impossible in design “patent” applications where the embodiments differ only by having more or less of the article claimed. Since the PTO isn’t shy about restricting in such cases, I don’t think they take quite as broad and principled a view of that rule.
3. More generally, the rule would also appear to prevent any restriction based on different embodiments in the spec. The examiner has to first consider whether or not he can search the claims as presented without undue burden, and presumably a valid restriction must then be based on saerchable differences between independent claims. That’s also something the PTO doesn’t have a problem with.
And what “rules” are to be followed that are so badly ignored?
At least this one:
“If the search and examination of **>all the claims in an< application can be made without serious burden, the examiner must examine *>them< on the merits, even though **>they include< claims to independent or distinct inventions."
Are you taking into account the maintenance fees for maintaining all of those issued applications on the same invention?
If they’re really for the same invention, you should be able to either draft a generic claim or make do with one set. If they’re for different inventions, you should be paying two sets of fees, but you might also decide four years down the line that one of them is no longer worth keeping.
Maintenance fees are meant to be paid only if it’s worth that much to you to continue having the patent. They’re optional, but you should have some room in your budget if that patent is earning you money somehow.
“Seriously, how often are all these petitions cost-effective compared to filing a divisional when the spec and claims are already drafted? ”
Are you taking into account the maintenance fees for maintaining all of those issued applications on the same invention? They eat an IP budget right up.
” seem to care about following any rules with respect to restrictions”
And what “rules” are to be followed that are so badly ignored?
In Technology Center 1600 the time for decision on a restirction petition is about 100 days and about 75% are granted or granted in part. If you petition after a non-final office action any delay caused by the restriction petition count in favor of the applicant PTA. A successful petition is no doubt cheaper than filing divisional applications – it is the cost of filing the petition versus the cost of filing and prosecuting and maintaining potentially multiple divisional applications.
Wow IANAE, it sounds like you are actually defending p_ss-poor response to petition practice with a don’t-bother-us-just-use-some-other-method cop-out.
Is this a strain of blame-the-applicant?
I was in-house at the time, so all the talk time with the office was not a cost burden (especially if we managed to get some traction we could use in all the other cases that get restricted)
It does change the math a little bit if you’re having one conversation that could apply to several cases, but just because you’re in-house that doesn’t make your time worthless. You presumably had other responsibilities besides that particular case, and at some point there’s a limit to how much time you should spend for a chance to save $700 (particularly since that lottery ticket costs $400).
Anyway, if you file the petition in three cases and it succeeds in one, you’ve incurred a slight loss – not even counting the time you spent. If your imputed hourly rate is a couple hundred bucks or more, you probably have to succeed at least half the time to make the petition worthwhile.
especially when we are dealing with a case filed in, say, 1996; the divisional may never even be picked up before the patent term expires…
That’s definitely an issue, but presumably you’re already on a continuation if you’re getting restricted this late in the game. When filing that continuation, it’s important to consider the possibility of getting restricted if timing doesn’t permit recourse to a divisional.
Just to add some details with respect to my particular case: the Examiner, SPE, and Art Unit Director were all interviewed, to no avail – very few in the Office seem to care about following any rules with respect to restrictions; I was in-house at the time, so all the talk time with the office was not a cost burden (especially if we managed to get some traction we could use in all the other cases that get restricted)…
If I recall correctly, the petition cost $400, large entity divisional would have cost, what, $1,090? Fee-wise, the math is simple…especially when we are dealing with a case filed in, say, 1996; the divisional may never even be picked up before the patent term expires…
My thought is that, after a traversed restriction requirement is made final, petitioning that restriction requirement is the last of several other options, including: following up/interviewing the Examiner, then the SPE, then SPRE, then Group Director.
… filing a divisional …
Seriously, how often are all these petitions cost-effective compared to filing a divisional when the spec and claims are already drafted? Or are we playing for maximum B delay on the full set of claims?
My thought is that, after a traversed restriction requirement is made final, petitioning that restriction requirement is the last of several other options, including: following up/interviewing the Examiner, then the SPE, then SPRE, then Group Director. One of the reasons petitioning might be considered a last option is because of the timeliness or lack thereof of petition decisions. Just an opinion.
Dennis,
I know it is not an issue too many get fired up about, but I have soft spot in my heart for challenging restriction requirements – 99% of which, in my experience, are so absurdly unwarranted that it should be a crime.
A couple years ago I petitioned one to test the process. No response yet…Our calls to the Office revealed that such petitions do not go to the petitions branch, they go to a “special” examiner in the art unit, whom, once we finally managed to track him down, kindly noted that they were running about 3 years behind in handling such petitions! How conveient – most cases will have reached final disposition by the time the petition gets picked up…I would be interested in others’ experience in this niche area or in any results that can be dug up regarding restriction petition stats.
I have COMPLETE data on average time to rule
J. Nicholas
Sounds interesting. I look forward to your analysis.
Dennis
I have some excellent data I can share with you on reexaminations petitions; in fact, I have COMPLETE data on average time to rule for example based on every petition ever filed in a reexam. When I get it into good form I will send on.
Petitions to revive/unintentional are also auto-granted. File it electronically and you are revived on the same or next day. Ca-ching. Next customer!
Petitions to make special based on inventor age are not substantively reviewed and are auto-granted upon filing.
You mean that the PTO doesn’t require submission of the inventor’s long-form birth certificate?!?!!?!?
Petitions to make special based on inventor age are not substantively reviewed and are auto-granted upon filing.
“Earlier this week…”
Dennis, today is Monday.
I am far more concerned about the timeliness of petition responses.
A petition does me no good if the decision comes after the 6 mount period, or even after the 4 month period (to be practical about it).
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