USPTO vs Hyatt: When an Applicant has Too Many Patent Applications

Hyatt v. USPTO, Case No. 14-1300 (E.D.Va. 2014) [HyattMotiontoDismiss]

Earlier this year, Gilbert Hyatt sued the USPTO for unreasonably delaying examination of 80 of his pending patent applications — many of which have been pending for decades.  See Crouch, Three Generations of Poor Examination are Enough.  That case has been transferred from Nevada to Virginia but is otherwise still pending. In its most recent motion to dismiss, the USPTO explained its delay in action — noting that Hyatt has 399 pending patent applications that include a total of over 100,000 claims that apparently all have a pre-URAA (1995) filing date.  While the USPTO admits that it stayed prosecution of most of Hyatt’s cases from 2002-2012, it started examining them again in 2013.  Because of the many overlapping applications held by a single entity, the USPTO has required Hyatt to “streamline” his applications.  The USPTO writes in its brief:

What Mr. Hyatt’s Complaint fails to acknowledge is that the 80 pending applications at issue represent roughly one-fifth of 399 applications he has pending before the USPTO, which contain an estimated total of 115,000 claims; that the size, volume, and interconnectedness of these 399 applications have created extraordinary challenges for the USPTO in examining his applications; that, faced with these challenges, the USPTO, last year, commenced a renewed effort to bring order and finality to Mr. Hyatt’s applications by requiring Mr. Hyatt to take certain steps to help organize and streamline his applications; and that, in response to that effort, prosecution is now actively ongoing in Mr. Hyatt’s applications, with Mr. Hyatt amending many of his claims and engaging in an iterative process with the 14 patent examiners who the USPTO has dedicated to working full-time on his applications.

The basic argument in the case is that the USPTO is now working on the applications and that there is therefore no role for the courts to play in ordering the applications to be moved forward.

I agree with the USPTO that 100,000 claims is quite a few, although it is fairly small compared with the more than 7.5 million claims that I estimate were disposed-of in 2013 (either allowed or abandoned).  Part of the problem is apparently the number of claims-per-patent-application.  The USPTO writes: “almost every one of Mr. Hyatt’s pending applications has one of the largest claim sets that the USPTO has ever encountered in any application.”   The USPTO is correct that such large claim sets are rare. From my database, I found that – out of the 200,000+ patents issued thus far in 2014, only six have more than 300 claims. (See. e.g., Patent No 8,694,657).

Under the streamlining procedures outlined above, the USPTO first grouped the applications into 12-families and in now requiring:

  1. That Hyatt select no more than 600 claims per patent family; and
  2. That Hyatt identify the earliest claimed priority date for each claim selected.

To move all of this forward, the USPTO has assigned 14 primary examiners to Hyatt’s cases.  Based upon prior history – I suspect that number won’t be enough to keep up with Hyatt!

233 thoughts on “USPTO vs Hyatt: When an Applicant has Too Many Patent Applications

  1. I applaud the streamlining effort by the PTO, but am troubled by what looks like blaming Hyatt. If he had too many claims when he filed, they could have raised that at the time. Did the PTO charge for claim fees back then? The more the PTO delays, the more there is harm for everyone who would be now be infringing decades-old technology.

    1. “The more the PTO delays, the more there is harm for everyone who would be now be infringing decades-old technology.” I agree. The PTO has absolutely no excuse for this long delay, and should immediately assign a team of examiners to quickly examine these applications. If restriction/election requirements are needed, issue them.

  2. If Mr. Hyatt has too many applications:

    Corporations are now persons so if it is possible for a person to have too many applications then it is possible for a corporation to have too many applications.

    When is the Patent Office going to stop examining IBM’s applications because they have too many of them?

      1. RH,

        I noted the lower average claim count, but I think that you miss the attempted point – that that notion of “interconnected” has less to do with the “family” and more to do with the (juristic) person.

        The Office distills Mr. Hyatt’s collection down to 12 families. How? And how many families would (or perhaps more to the point, could) ALL of the juristic person of IBM distill down to? How many patents and patent applications would that juristic person have per family?

        I can guarantee you this: the number would absolutely dwarf the number that Mr. Hyatt has – and that, I believe, is the point of the post by No One in Particular.

        1. …and for comparison’s sake, how many examiners have been involved with IBM patents for the last several decades…?

          (you know, in order to base any comparison on prior history and all)

        2. I don’t follow your point about patent family vs. applicant. A large number of related applications requires extensive coordination among them to ensure consistent prosecution. A large number of unrelated applications does not.

  3. Richard: My former supervisor was previously assigned to the special docket pertaining to Mr. Hyatt’s case. Based on what he told me, Mr. Hyatt’s applications had a lot of 112 first paragraph (pre-AIA) issues. Apparently, Mr. Hyatt filed continuations and wrote claims based on the state of the art of the decade as time progresses; i.e., whatever is the latest and the hotest, he would tried to write claims with scopes that would cover the latest and the hotest stuff.

    Shocking! Nobody could have predicted such behavior, particularly not from a guy who’d already raked the industry with an invalid patent.

    1. What gets me about this is that the PTO dumps these applications on examiners without giving them extra points for all those claims. I’ve filed an application with 185 claims and it was miserable for the examiner and totally unfair. I felt like I was tormenting the guy and yet we paid big bucks for all those claims.

      1. You should have filed 9 applications. When you figure the extra claim fees versus the filing fees for 8 extra applications, it’s basically a wash. And then each application would have gotten its own hours/disposal on the examiners docket.

        Don’t file more than 20/3 claims. If you learn only one more thing about practicing in front of the PTO, it’s this: DON’T FILE MORE THAN 20/3 CLAIMS.

        Simple.

        1. I hear what you are saying AAA JJ, but is that not just gaming the system?

          All else being equal, should we not have as many claims as necessary to capture the invention – no more and importantly no less – regardless of the extrinsic effect of claim count?

          Prof. Crouch had a post a while back that captured your advice – showing the statistical anomoly (and impact) of the completely arbitrary 3/20 choice.

          It would not surprise me at all if the Office had instead chosen 5/50, that the graph would have been identical, but centered on the different numbers.

          Should we not instead focus less on such arbitrariness? Does not such focus breed the very aspect that the Supreme Court disdains (the art of the scriviner)?

          You may submit your answer in terms of legal realism if you wish.

          1. I don’t know if 20/3 is “completely arbitrary.” What I do know is that the PTO has never, never, never, never, never, until Mr. Hyatt’s lawsuit apparently, given “extra examining resources” (i.e. time) to any examiner in exchange for the payment of extra claim fees. When I was a primary examiner, I got 13.8 hours/disposal. Didn’t matter if the case had 1 claim, or 100 claims.

            “…but is that not just gaming the system?”

            I have no doubt that to the uninformed it may appear to be gaming the system. But I don’t really care what the uninformed think or say. My clients get a fixed amount of the examiner’s time for their filing fee. That filing fee allows them to present 20/3 claims for the examiner’s consideration in that fixed amount of time. Presenting more claims than that simply ensures that each extra claim that I present, and my clients pay for, gets less and less and less consideration. So I don’t file more than 20/3. It’s a disservice to my clients. It’s also a disservice to the examiner. So I don’t do it.

            “All else being equal, should we not have as many claims as necessary to capture the invention – no more and importantly no less – regardless of the extrinsic effect of claim count?”

            I write as many claims as I think I need to protect my client’s technology. If there’s more than 20, I file more than one case.

            Until the Patent Office starts assigning each application its own unique hours/disposal, that is what I will do. Like you, I have proposed several systems for doing just that that the PTO could fairly easily adopt. But they don’t want to. They want to go on charging, collecting, and spending, that’s right spending, extra claim fees without ever delivering what was paid for. Unless more applicants speak up about the issue, the PTO is not going to kill the goose that laid the golden eggs (i.e. extra claim fees). But they’re not getting any from my clients.

            1. “Unless more applicants speak up about the issue, the PTO is not going to kill the goose that laid the golden eggs (i.e. extra claim fees). ”

              I just don’t see how it is a goose here. You do know if they stopped charging for that at all then they’d just raise fees somewhere else correct?

              “Like you, I have proposed several systems for doing just that that the PTO could fairly easily adopt. But they don’t want to. ”

              You say “fairly easy” but I’m not so sure about that. Even glancing at every incoming application increases the amount of management required per application from substantially zero to a finite amount.

              1. “I just don’t see how it is a goose here.”

                You don’t see how charging, collecting, and spending extra claims fees for 20+ years without ever once providing applicants and examiners what was paid for is a golden goose for the PTO?

                You been there too long.

                “You say ‘fairly easy’ but I’m not so sure about that. Even glancing at every incoming application increases the amount of management required per application from substantially zero to a finite amount.”

                The PTO has all the data it needs. An algorithm could be written fairly easily, yes, fairly easily, to calculate a unique expectancy for every application. Nobody needs to even “glance” at the app.

        2. “When you figure the extra claim fees versus the filing fees for 8 extra applications, it’s basically a wash. And then each application would have gotten its own hours/disposal on the examiners docket.”

          And you get 8 extra searches. Possibly bringing in new eyes on your search.

          1. Excellent point. Of course, it exponentially increases your IDS burden but if you are truly interested in getting the most relevant prior art, it’s worth it.

  4. As Taxpayers, some of us are losers, (we pay FAR more into the system than the “services” we get out of it…e.g. Bill Gates) while others of us are winners (people who produce far less than what they are given by the nanny state).

    Anyone care to guess whether Hyatt is a Taxpaying loser or winner? In sum total (dollars) what expenditure are taxpayers likely paying for his sole benefit (assuming it is only a game and his sole benefit is entertainment)?

    1. The counter to that argument is that taxes are taken on a percentage, and that “playing the game” (for argument’s sake even allowing the notion that the play is somehow unethical, illegal or otherwise morally wrong) STILL rewards that “bad” game playing with unjust enrichment no matter how much taxes are paid into the system regardless of what others you want to compare to.

      1. I guess the real losers are the rest of the Taxpayers… unless there is some “bonna fide”: anti-gravity or faster-than-light travel invention in there….

        1. In essence, it comes down to whether or not Mr. Hyatt meets the legal requirements for obtaining patents (even jumbo patents that meet the law must be granted).

          Perhaps there is a bona fide reason for the real delay (yes, there has been a real delay by the Office, and their “but we are moving now, some decades later should be good enough so don’t bother us” line of thinking is reprehensible.

          But the government may have a point in its argument concerning whether that issue is one that is justiciable. My quick opinion is that it should be, as the federal agency should be held accountable and made to explain why the its delay can be deemed “reasonable.”

          As others have posted, the shear size alone argument does not seem to pass muster, and indeed something more seems afoot.

          1. Government’s brief at 10-11 talked about Hyatt v. Kappos would affect all of Hyatt’s cases and therefore, all actions are suspended pending its disposition.

            1. Thanks Richard – saw that.

              I don’t think the evidence submission issue affects examination at all, do you?

              The Section 145 proceeding does not – and cannot – change the record for which the Office proceeds under.

              I hope that you reasoned through the smokescreen.

    2. “In sum total (dollars) what expenditure are taxpayers likely paying for his sole benefit (assuming it is only a game and his sole benefit is entertainment)?”

      Not sure I take your meaning. Other than this court case (which yes, consumes public monies), how are taxpayers charged with paying for Hyatt’s entertainment?

      1. I would add too that the court case – unless found to be frivolous – cannot be automatically assumed to be a waste of taxpayers’ monies.

        Easily at first blush, Mr. Hyatt appears to have a colorable, if not legitimate cause for using those taxpayers’ funds.

        You don’t have to like the guy, or even like how he is spending his money to recognize that a federal agency must play by its own rules, and cannot use any means to reach a (perhaps even desirable) end.

        The ends simply do not ever justify “whatever” means.

        Ever.

    3. As Taxpayers, some of us are losers, (we pay FAR more into the system than the “services” we get out of it…e.g. Bill Gates)

      Try to believe it, folks.

  5. Issue obviousness-type double patenting rejections over 5,619,445 or similar others, let him file TDs, then grant the apps – DOA.

    1. Mellow,

      Does not the fact that these are pre-1995 applications (with a different law dictating when they expire) preclude your “DOA” status?

      And in very real part related to post 1995 Patent Term Adjustment law, the extension of patent term for non-applicant delay have an analogous justification for NOT allowing a government stall to render patent term inert?

      1. anon, do you get PTA in an application that will adjust your expiration date past the expiration date of the disclaimed-over patent? (I believe the answer is “no”.)

        Does that make it right? Dunno.

        But despite my initial (flippant) comment, to the extent any of his pending apps honestly can be rejected as obvious attempts at double-patenting in view of another of his patents that expired this year (as the one mentioned above) or in prior years, I do believe they should have no term.

        (Whether they can or cannot honestly be rejected in this fashion, I have no opinion.)

          1. If you were responding to this portion of my comment, “(Whether they can or cannot honestly be rejected in this fashion, I have no opinion.)”, does directing me to 1.4 mean that it doesn’t matter if they CAN be honestly rejected in such fashion, because the PTO does it all the time in slip-shod fashion?

            If so, yeah, I guess they do sometimes. But many of the OTDP rejections I see are well considered and well explained, too.

            1. “But many of the OTDP rejections I see are well considered and well explained, too.”

              My experience is the exact opposite. Most of what I get as OTDP rejections are nothing more than “the claims are rejected cuz they just broader.”

        1. I recognize that you may be making a valid point that double-patenting may limit some of the term of “held-up” patents, but I am countering the notion that such is an effective measure for more than just the purpose of that measure and that somehow the bulk of the issue here is so easily resolved with the t001 you offer.

          I don’t think you can skirt the issue of Office malfeasance so easily, nor should you (the Royal You) want to.

          1. “I don’t think you can skirt the issue of Office malfeasance so easily”

            I agree it seems they’ve botched the job. From the looks of things, purposefully so.

            1. Accountability for that should be rendered.

              I posit that the government has a legitimate right to argue that this court is just not the right vehicle to reach that accounting.

              Just as Mr. Hyatt has a legitimate argument that this court is the right court to force an administrative agency to abide by the notion of “reasonableness.”

              Of course, the court may find for Mr. Hyatt and not give him what he asks for.

              What is your view (for argument’s sake, let’s say that the agency is found to have acted unreasonably) of te proper “correction” that the court could order?

              1. Richard : My former supervisor was previously assigned to the special docket pertaining to Mr. Hyatt’s case. Based on what he told me, Mr. Hyatt’s applications had a lot of 112 first paragraph (pre-AIA) issues. Apparently, Mr. Hyatt filed continuations and wrote claims based on the state of the art of the decade as time progresses; i.e., whatever is the latest and the hotest, he would tried to write claims with scopes that would cover the latest and the hotest stuff.

                Shocking! Nobody could have predicted that.

    2. My former supervisor was previously assigned to the special docket pertaining to Mr. Hyatt’s case. Based on what he told me, Mr. Hyatt’s applications had a lot of 112 first paragraph (pre-AIA) issues. Apparently, Mr. Hyatt filed continuations and wrote claims based on the state of the art of the decade as time progresses; i.e., whatever is the latest and the hotest, he would tried to write claims with scopes that would cover the latest and the hotest stuff.

      It would be ok except that Mr. Hyatt’s original specification that he filed way back in the 60s often do not sufficiently support what he is claiming. The PTO is having problems not just because the sheer volume of the claims Mr. Hyatt have but also the question of whether his original specifications sufficiently supports whatever he is claiming.

      1. Richard, thanks for the detail. Once had to deal with a series over a dozen “divisionals”** filed and granted with similar claims problems. Many of the patents of this family had claims where few of the terms other than the words “and”, “is”, “the” were even presented in the spec.

        **Not one of these “divisionals” contained a claim relating to the claims in the original parent’s restriction requirement.

        In any event, in going through their file histories it always baffled me why the examiner wouldn’t have raised 112.

  6. “We are the most Ginormous gummint in history. We got paid, from the taxpayers, the single most largest revenue in the history of the Earth. But Mr. Hyatt, one single guy, he be swampin’ us. Please send us charity money or sumpin’ on account of us not bein’ able to handle po’ lil’ Mr. Hyatt.”

  7. So, if Hyatt gets his patents for those filed post-1995, what does the math say he’ll get in patent time? 20 years – 14 years later + 5 year extension max = 19 years?

  8. This from AAA at 8121111 in this thread:

    “The EPO does a fairly good job at “compact prosecution” although they don’t call it that. The examiner searches and identifies D1 (the reference considered the closest relevant prior art) and sticks with it pretty much every time. There’s none of the shenanigans US examiners engage in like citing irrelevant art that is only relevant under the typical examiner BUI and then issue final OA in hopes of generating an RCE. The USPTO could help itself out a lot if they would adopt the EPO’s examination model.”

    In reply, I say, forget that notion. It is unattainable. Why?

    The EPO’s examination model is built on the foundations of civil law, the EPC and the EPC’s Implementing Regulations, all out of reach of the USPTO.

    The EPO search is framed around the EPO “Problem and Solution Approach” to obviousness. It goes to the substance of the contribution to the technical field that is presented in the appln as filed (as opposed to the wording of the claim).

    Any prosecution amendment away from the subject matter originally claimed will fall foul of one or more of the following prohibitions:

    No switch to subject matter that has not already been searched

    No amendment to a feature combination which is not directly and unambiguously derivable from the appln originally filed.

    No amendment that renders the claim in any way unclear.

    Consent of the Examining Division required for ANY amendment beyond the first round of post-FAOM amendment. (ED: You would do well to behave yourself. Mess with us, son, and we sure can mess with you).

    No conception of what “due process” means.

    6 thinks that at the EPO the Examiner on the merits is a different person from the search Examiner. That might have been the case 20 years ago, but not now. These days, the FAOM is appended to the EPO Search Report, by the Examiner who composed the search report. The composite doc is called the EESR, and it really does ease the prosecution.

    1. >>No switch to subject matter that has not already been searched

      Yeah, but it is all supposed to be searched. This is probably the weakest part of the EPO prosecution. The examiners are down right lazy about this.

      1. As you say, Night, it is all supposed to be searched. But what do you mean by “it”?

        If by “it” you mean the dependent claims, I’m with you. More than that: the EPO Guidelines instruct EPO Examiners to search even beyond that. They are upposed to search for what the Applicant will narrow down to, when all the claims as filed are shown by the search references to lack novelty.

        If by “it” you mean some throwaway sentence buried in the specification that says that you can replace the “D” with “F”, in your independent claim directed to ABCDE, then I’m not with you. ABCEF is a 100%different invention, and at the EPO, for just one search fee, you get just one invention searched.

        It is great then, that you see this as the weakest part of EPO prosecution. Good to know.

        It all goes to show that, in First to File Country, claim drafting is the acme of the patent attorney’s skill set. Outside the USA, you get just the one shot, at drafting a case to protect the client’s invention effectively. Few possess the aptitude to do this: their special skill should be recognised as the apex of sophistication, at least equal to the skills of litigators.

  9. 6 –

    Why haven’t you commented here about the absurdity of the point system, which issues the same number of points for a FOA, whether there are 5 claims or 500?

    1. Sorry Les, I thought it went without saying since I’ve said it a gazillion times.

      Here it is for the gazillion and oneth time:

      I hereby comment about the absurdity of the point system, which issues the same number of points for a FOA, whether there are 5 claims or 500, and whether there are 10 pages or 100 pages and whether it is for a new kind of old part that is easily searched or whether it is for a complete redesign of an entirely new product with many many sub-features.

          1. The count system is a “no management required” system to begin with brosef.

            You guys really do not get the point of the count system. It is to wholly (or nearly entirely) replace the act of “management”. That is literally the reason for its existence.

            1. You guys really do not get the point of the count system. It is to wholly (or nearly entirely) replace the act of “management”. That is literally the reason for its existence.

              That is painfully clear from where I sit.

            2. No, we’re entirely aware of the situation and saying that if these cases were really so onerous, they should have been brought to the attention of “management” for special treatment.

                1. Are you really that dense? These cases were CLEARLY known to management. Their choice was to do nothing. Hence, the lawsuit.

                2. “Their choice was to do nothing. ”

                  And what if that was the “special treatment” you so desperately advocate them providing?

                3. Don’t forget to upper case the “c” in “constitutional” and the “r” in “rights”. It’ll help them sound more like a real thing :)

            3. 6 – I need some advice.

              I have received a Notice to file corrected papers that says an application I filed was not filed with a properly executed declaration. But it was. Or at least as far as I can tell, it was.

              So, I called the number at the bottom of the form about 3 weeks ago. After 5 minutes of recorded menu information it said the hold time was approximately 158 minutes and offered me a chance to leave a message. I did.

              After no reply for several days, I called again. Same deal.

              After some days of no response I contacted the Ombudsman. He seemed to try to help and sent an email to someone.

              After a week of no response, I called him again. He gave me the name of the someone else.

              I called that someone and got her answering machine which says if this is about a letter you received from the patent office, call the same number I called three weeks ago. Only if it is not about a letter should I leave a message. I left a message anyway. I’m pretty sure she wont call me back. I also tried the number her answering machine gave me (the same one I already called). This time, the wait time was indicated to be only 44 minutes. I left a third message.

              If no one calls me back, what should I do?

              1. Well as much as I’d like to help you out Les this sort of thing is not my day to day. But here goes.

                Ok, so they originally didn’t give you any explanation as to why the declaration was not properly executed and it was executed in more or less customary fashion correct? I’m going to assume this is correct or else you’d have told us. And if they told you then obviously correct the problem.

                It sounds like you’re getting bounced around the LIE/”underbelly of the notices” world. You’re usually dealing with people that know what the problem is but not how to tell you what the problem is. I’ve been there man. I’m surprised the ombudsman couldn’t do more for you outsiders. You may want to ring him back and just let him know what’s going on.

                If it shows as being on the docket of someone already then obviously contact whomever it has gotten to the docket of.

                But I take it that you just now filed the thing more or less so it hasn’t been docketed. In that case, and since this is so on-going, you may want to just beg a moment off of the nicest spe that you know in the office when you’re talking about something else and inquire about what to do in this situation.

                If you cannot find something out using either of those things let me know and I’ll look into who you’re supposed to talk to for you.

                I don’t know about deadlines for things like this, IF there is one that is coming up you may want to file another copy of the dec (double checking it and having a colleague double check it) along with a response stating why you believe it is proper and requesting specifically that if it is still deemed not properly executed that the office provide you with the specific reason as to why not.

                Also you may want to check this thing out, or the new AIA statute itself, for new reqs on oaths/decs. See section II

                link to uspto.gov

                If you’re missing something then obviously put it in and re-file.

                It says this form is good to use if you’re using an ADS: PTO/AIA/01

                Anyhow other people can chime in here, I know for a fact there are some higher-up office people reading this thread at this moment.

                1. All of your assumptions are correct. As far as I know we complied with the new declaration rules. It begins with the special sentence: The above-identified application was made or authorized by me.

                  There is a deadline. But I don’t think it applies to the declaration issue… just the complaint about the small font in the figures.

                  The issue is they want $140 as a penalty for not filing a properly executed oath or dec with the application….. but there is sits in PAIR….. so… I don’t think the refiling will work unless we want to pay $140 for no reason.

                  I suppose compared to what the Office did to Hyatt, this is small potatoes…. but still.

                2. Well you may have to pay the fee just to have the thing moved forward, and perhaps it is refundable later. Or maybe you don’t, that I don’t know, but the answer to that is probably in the MPEP.

                  I would think just put something in there about it in your response if you file one.

                  If all else fails I would think the app would eventually get to an examiner with a spe that should be able to sort the thing out manually. But I cannot promise that.

                  Just let me know if you can’t get it worked out here in a bit and I’ll see what I can do.

    2. Or the same number of points even though technologies are different. Compare encryption with anything mechanical, for instance. One of my former bosses was a former examiner and he said some examiners came in a few days a week to get all of their work done, while others worked a ton and still couldn’t meet quotas.

  10. It’s always an interesting exercise to put yourself in someone else’s shoes.

    Let’s say I’m a gadzillionaire. I’m waiting for my driver’s license to be processed. It’s taking forever. And I really, really, really, really, really want my driver’s license because I’m entitled to it and because apple pie and Thomas Jefferson.

    Given that I have the money to publicize my grievance to pretty much everyone on the entire planet, including Congress and the President of the United States as well as the head of the DMV, do I make some serious effort to do that and maybe hire some really smart lawyers to negotiate a solution? Or do I just sit around for a decade or so and do pretty much nothing? Remember: I really, really, really, really, really want my driver’s license. I’m not playing games, nor am I hoping that the passage of time may yield additional benefits. So what do I do?

  11. It’ll never cease to amaze that people who wish to be taken seriously actually embrace this goofball gadzillionaire as if he’s the Rosa Parks of patent law.

    Too funny. The only positive thing Hyatt is accomplishing here is underscoring just how incredibly ripe-for-abuse the beloved “1952 patent act” was, as well as underscoring the potential for abuse of the current, broken system where the applicant has tons of money to spend and seems primarily interested in gumming up the PTO for the sake of gumming up the PTO.

    Here’s a very modest proposal: put some caps on the number of the applications, claims and patents that can be obtained by a single inventor, and the size of any application, and the number of claims that can be drawn from a single application. By all means leave plenty of “breathing room” so that no super genius “innovator” gets constrained and leave open the possibility of exceptions to be granted under extraordinary circumstances (accompanied by extraordinary fees, of course). Just so there’s no confusion: I’m talking about caps that would eliminate behavior like Hyatt’s behavior (i.e., an entity with massive sums of money intent on throwing a wrench into the PTO beause “it’s legal”), and not a cap that would ever affect a normal and prolific inventor. Why would anyone to object to this?

    Here’s a couple questions for the historians and stat-keepers, just to get a sense of perspective about what is going on here:

    1) What is the world record length of time between the critical date of a patent and its expiration date (have to assume it’s a US patent because no other patent system could be as d u m b as ours was) and how likely is it that Hyatt will break that record?

    2) How many total US utility claims were granted to Thomas Edison in his entire lifetime? He was the inventor on 1083 utility patents. I’m going to take a guess that most of those patents had less than 10 claims. That’s 10,083 claims. Hyatt filed what — 100,000+ claims over a period of five to ten years? And somehow this brainiac doesn’t even have a wikipedia entry documenting his astounding contributions to technology.

    1. So now you’re just attempting to smear him for having money?

      The patent system should be impartial. It’s hard to believe that you’re a real attorney when you’re advocating such a skewed and selective system for establishing Constitutional rights.

      1. “So now you’re just attempting to smear him for having money?”

        I thought he smeared him for having money and using specifically to gum up the PTO.

      2. now you’re just attempting to smear him for having money?

        Not at all. It’s how he’s using the money that merits criticism.

        It’s hard to believe that you’re a real attorney when you’re advocating such a skewed and selective system for establishing Constitutional rights

        Huh? What “selective system” for “establishing Constitutional rights” do you think I’m advocating for?

    2. “And somehow this brainiac doesn’t even have a wikipedia entry documenting his astounding contributions to technology.”

      He really does need a wiki lol.

    3. “Here’s a very modest proposal: put some caps on the number of the applications, claims and patents that can be obtained by a single inventor, and the size of any application, and the number of claims that can be drawn from a single application.”

      So because the PTO, by its own admission, can’t examine a large number of applications of one applicant according to its own “compact prosecution” standard, we should cap applications, claims, and patents for everybody?

      Is that a serious proposal?

      “I’m talking about caps that would eliminate behavior like Hyatt’s…”

      Wouldn’t examining them according to their own “compact prosecution” principles eliminate his behavior? Send out the typical, “clearly anticipated” and “reference doesn’t show, but it would have been obvious” rejections, wait for response, call up original OA, insert form paragraphs “not persuasive” and “can’t attack references individually” and “standard for obviousness is not bodily incorporation” and “design choice” and then insert the “This action is final” form paragraph, post for counting, and then head over to the PTO fitness center, take the standard PTO lunch two hour, and then head over to Eisenhower Ave to take in a movie. What’s so hard about that?

      “Why would anyone to object to this?”

      Uhm, maybe because it’s completely unnecessary. Just a thought.

      1. So because the PTO, by its own admission, can’t examine a large number of applications of one applicant according to its own “compact prosecution” standard, we should cap applications, claims, and patents for everybody? Is that a serious proposal?

        Is it a serious proposal and if you read what I wrote you’ll note that it wouldn’t affect “everybody” but, rather, just about nobody except for the worst of the worst. Even you would not be affected (most likely anyway).

        “Why would anyone to object to this?”

        Uhm, maybe because it’s completely unnecessary.

        As “anon” points out downthread: “Anybody with cash can still play this ‘game.’” And lots of other similar games.

        It’s a real problem, albeit a rare one. Let’s just close the gate.

        1. I don’t think it’s a real problem. And even if it is/was, the PTO is complicit in its creation. All they had to do was examine his applications exactly along the lines I outlined above. Perfunctory OA devoid of substance, wait for his response, perfunctory final OA devoid of substance, let him appeal or file a continuation, if he appeals perfunctory examiner’s answer and perfunctory Board decision, and let him appeal to Fed. Cir. or file a continuation.

          I get the sense from the PTO’s motion that they are trying to create the impression that they are trying really, really, really, really, really hard to “get it right” in his cases. Why? Give his applications the same slipshod examination that every other application gets and then put out a report trumpeting the record breaking outstanding quality work they are doing. Seems pretty simple to me.

          Why are these cases such a problem for them?

          1. “I get the sense from the PTO’s motion that they are trying to create the impression that they are trying really, really, really, really, really hard to “get it right” in his cases. Why? ”

            Sometimes they do that in cases that they deem could be immediately impactful on the public.

          2. I don’t think it’s a real problem.

            Gee, I wonder why.

            And even if it is/was, the PTO is complicit in its creation.

            That’s pretty funny. Did the PTO mate with Hyatt’s mom to produce Hyatt? Is that what happened here? If so, that’s the first time I’ve heard about it.

            Since you apparently missed it the first time: current rules/laws permit rich unscrupulous actors to overwhelm the PTO with massive filings and create “Constitutional scandals” when the PTO doesn’t act quickly enough on that junk. Get it? Now, there’s an easy way to prevent that from happening that won’t affect anybody’s precious “patent rights.”

            As I indicated, I don’t think it’s a very difficult problem to solve. Just lay down some reasonable caps as I suggested and then we don’t have to worry again about applicants choking the PTO with massive filings and then sueing the PTO for not speaking clearly and quickly enough about them.

            1. “Now, there’s an easy way to prevent that from happening…”

              Your “easy way” is never going to happen, for reasons which you well know, or should know, and your continued peddling of such nonsense is hardly “elevating the debate” on this site.

              Why don’t you suggest something that could actually solve the problem, like I did (e.g. just give each of the 399 Hyatt applications the typical slipshod examination that every other application receives)?

              1. Caps on creativity, or the number of applications goes directly against the mandate of the Office.

                (Lol, you want to talk about unscrupulously causing “Constitutional scandals”…)

              2. “Your “easy way” is never going to happen, for reasons which you well know, or should know, and your continued peddling of such nonsense is hardly “elevating the debate” on this site.”

                I would like to know those reasons, since the last time I heard it discussed in a court case everyone involved seemed to be more or less reluctant to forbid the PTO from doing just that. Now, it may be that since we put a patent attorney in as the director that such would not be likely to happen due to where their sympathies lie, but that is something that could be overcome by one simple director with fortitude.

              3. AAA JJ Your “easy way” is never going to happen, for reasons which you well know,

                Ah, so you’re a mentalist like “anon”. Very impressive.

                Tell everyone what these “reasons” are. I’m very curious. Does it have anything to do with you throwing a tantrum because it “limits” patent rights?

                1. You funny. I don’t recall either Dr. Tafas’s or GSK’s attorney throwing a tantrum. I do recall them mopping the floors of the EDVA and Fed. Cir. court houses with Toupin and the rest of the clown car contingent from the PTO without too much effort.

                2. AAA JJ,

                  Malcolm’s “throwing a tantrum” is an obvious emotion laden rhetorical ploy from Malcolm, given that he cheered on the losing anti-patent side in the Tafas case.

                  He has consistently been on the side of any and all attempts to weaken the patent rights enjoyed by innovators, with the possible exception of the Myriad, a case he professed not to care about even as he thrashed about with more than 30,000 mewling words of spite in the immediate aftermath of that case.

                  Is it any surprise that he wants the lone case so clearly decided that is also against his own interests to be the only case supporting more patent rights?

                3. “I do recall them mopping the floors of the EDVA and Fed. Cir. court houses with Toupin and the rest of the clown car contingent from the PTO without too much effort.”

                  That’s funny because last I remember at the Fed Circ when asked about this exact situation they seemed to demure.

                4. I think the Fed. Cir. made it pretty clear that the PTO had no rule making authority to put a hard limit on the number of continuations an applicant could file. Not sure how you think a hard limit on the number of applications, continuations or original non-provs, could be done by the PTO.

                  Like I said, it’s a free country. Feel free to continue being wrong.

                5. As I recall, 6 was very vocal during the Tafas debacle about “how right” the Office was in what they were attempting to do. I even recall a “who is your daddy,” egg story on the old Patent Hawk blog inwhich 6 was reamed (does that blog still exist?)

                  Maybe 6 is just reliving his “glory years.”

                6. I don’t recall either Dr. Tafas’s or GSK’s attorney throwing a tantrum. I do recall …

                  Except none of that has nothing to do with Congress writing a new law that nobody has any reason to object to.

                  Patent reform has not “gone away”, and it’s not going to go away.

                  There’s more to come. A reasonable cap on mega-filings to prevent future Gil Hyatt’s from throwing hornet’s nests into the USPTO is something everyone can look forward to.

                  Of course, if you have some other objection besides “never going to happen”, by all means go ahead and make it.

                7. “Except none of that has nothing to do with Congress writing a new law that nobody has any reason to object to.”

                  You funny.

                8. “I think the Fed. Cir. made it pretty clear that the PTO had no rule making authority to put a hard limit on the number of continuations an applicant could file. Not sure how you think a hard limit on the number of applications, continuations or original non-provs, could be done by the PTO.”

                  Claims allowed to be filed per app is a different ball of wax brosef. They discussed this in the federal circ. oral args. and everyone was all like “o well they’d just restrict but I haven’t considered just a blanket limit on numbers of claims per app” because obviously the PTO has administrative authority and if they feel the number of jumbo claims is getting too ridiculous they have authority over exactly that sort of thing.

    4. Why did he have so few claims? One reason is because he could do this:

      1. The combination of a switch or switches e e’, types and cylinder p, with an electric battery, connected and operating substantially as and for the purpose set forth.

      See US patent number 90,646. You don’t need a lot of claims when you can basically claim what’s in the figures and your invention was conducive to putting in figures.

  12. Putting an end to compact prosecution certainly would help streamline things and help the PTO shovel this out the door. But looking ahead, combined with decisions like Alice (why bother wasting resources with 102 or 103 when 101 is dispositive?), it would also enable examiners to burn through certain dockets at so rapid a clip as to leave the PTO with perhaps several thousand more examiners than necessary. And who at the PTO wants to preside over institutional shrinkage of that magnitude?

    Another approach: look to the Constitution, which says that Congress may grant patents, but only for a limited purpose: “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” Anything that was filed over 20 years ago very likely does not meet this purpose and thus should not be granted patent protection. End of Hyatt, and of the rest of our submarine patent force.

    1. who at the PTO wants to preside over institutional shrinkage of that magnitude?

      Good points, Egon, but there is plenty of work to be done before anybody needs to worry about a “massive contraction” of the USPTO workforce.

      That said, I can see where presiding over a successful streamlining of that sort (i.e., a streamlining that eliminates waste while drastically improving the quality of patents being issued) would be a magnificent feather in one’s cap if one were pursuing a career in politics or management of any other large institution.

      I’m told that anon’s pal Hal Wegner has also sorts of wonderful ideas about how to improve the manner in which the PTO does business. It’s odd that he isn’t striving to patent all those ideas, given the alleged progress-promoting properties of such patents.

    2. “But looking ahead, combined with decisions like Alice (why bother wasting resources with 102 or 103 when 101 is dispositive?), it would also enable examiners to burn through certain dockets at so rapid a clip as to leave the PTO with perhaps several thousand more examiners than necessary. And who at the PTO wants to preside over institutional shrinkage of that magnitude?”

      We have fee setting authority, you can always bump up the time per application if you want to minimize shrinkage of workforce.

    3. This isn’t entirely an issue with compact prosecution. It’s also an issue with proper finality, for which the rules are specific and clear as to what we have to do.

      If we handwave at dependent claims, then an applicant can put that claim into independent form and get another non-final OA out of us when the handwaving rejection turned out to be bad, but the claim was still rejectable. For examiners on the normal production treadmill, that’s just not manageable.

      When you’re talking about a case with hundreds and hundreds of claims, every single claim has to be properly rejected every time, but the applicant only has to be right once in order to get another free OA (or two).

      1. “When you’re talking about a case with hundreds and hundreds of claims, every single claim has to be properly rejected every time, but the applicant only has to be right once in order to get another free OA (or two).”

        Nonsense. I have plenty of cases with the standard 20/3 claim set and the examiner handwaves at plenty of claims, independent and dependent (e.g. “While the reference doesn’t show the feature, the examiner takes Official Notice that it’s an obviously inherent design choice to routinely optimize the prior art…”), and when I thoroughly destroy that rejection, I get a final rejection with garbage boilerplate form paragraph responses. When I file a pre-appeal I get another “free” OA (if you consider the $800 Notice of Appeal fee free), but let’s not kid ourselves that the PTO is handing out “free” OA’s every time the examiner handwaves at a claim. Or two claims. Or all of the claims.

        And the examiners know that the petitions process for challenging an improper/premature final is irreparably broken as there’s almost no chance of getting a correct decision before the end of 6 month statutory period.

  13. Upon what basis does the office claim the right to limit Mr Hyatt to 600 claims per “family”? I was under the impression that that sort of thing died with Mr. Dudas’ “final rules.”

    I assume Mr. Hyatt paid excess claim fees for more than 600 claims per family. Will his fees be refunded?

    1. 37 CFR § 1.75 (b) More than one claim may be presented provided they differ substantially from each other and are not unduly multiplied.

      37 CFR § 1.146 … However, if such application contains claims directed to more than a reasonable number of species, the examiner may require restriction of the claims to not more than a reasonable number of species before taking further action in the application.

      I don’t know what, if any, statutory basis there is for these rules other than
      35 U.S.C. §2(b)(2)(A): The Office may establish regulations, not inconsistent with law, which shall govern the conduct of proceedings in the Office.

    2. This also from the MPEP 2173.05(n) on undue multiplicity of claims:

      As noted by the court in In re Chandler, 319 F.2d 211, 225,138 USPQ 138, 148 (CCPA 1963), “applicants should be allowed reasonable latitude in stating theirclaims in regard to number and phraseology employed. The right of applicants to freedom ofchoice in selecting phraseology which truly points out and defines their inventions should not be abridged. Such latitude, however, should not be extended to sanction that degree of repetition and multiplicity which beclouds definition in a maze of confusion. The rule of reason should be practiced and applied on the basis of the relevant facts andcircumstances in each individual case.” See also Inre Flint, 411 F.2d 1353, 1357, 162 USPQ 228, 231 (CCPA 1969).

      Also, it is possible to reject one claim over an allowed claim if they differ only by subject matter old in the art. This ground of rejection is set forth in Ex parte Whitelaw, 1915 C.D. 18, 219 O.G. 1237 (Comm’r Pat. 1914). The Ex parte Whitelaw doctrine is restricted to cases where the claims are unduly multiplied or are substantial duplicates. Ex parte Kochan, 131 USPQ 204, 206 (Bd. App. 1961).

  14. Find the prior art, make good rejections on the independent claims (which obviously track one another), wave your hands at the dependent claims, and let the applicant sort it out.

    This is no different than any other family, and a good examiner would have already disposed of all of this…….. If they had put it on an examiner’s docket…..

    And therein lies the problem; managing instead of working.

    1. “Find the prior art, make good rejections on the independent claims (which obviously track one another), wave your hands at the dependent claims, and let the applicant sort it out.”

      Obviously what they should be doing obviously.

  15. Of course what the PTO does not admit is that for, what, 20+ years now they have been charging excess claim fees for every application that exceeds the 20/3 claims that come along with the filing fee on the rationale that “extra claims require extra resources.” Until now, the PTO has never, repeat never, provided either applicants or examiners with “extra resources” (i.e. more examining time) in exchange for those fees. To the extent that Mr. Hyatt is the first applicant to ever force the PTO to provide what they charge excess claim fees for, I thank him.

    1. I agree. Nothing worse than dealing with an examiner when you have put in a lot of claims and they are not treated fairly by being given some of the fee you had to pay. An example of why examination needs massive overhaul.

  16. “That Hyatt select no more than 600 claims per patent family”

    That’s outrageous. Is the PTO blatantly violating 35 USC 121 and issuing made up non-restriction requirements? I hope he petitions and then this nonsense to the district court.

    1. And then when the distdict court laughs at him we’ll all get a good lol here on po right? I know u love the lols as much as I do.

      Though no it does not appear to be a restriction req.

      1. The Office has to give a reason for a restriction – and they can be traversed.

        That’s not to say that Office restriction practice does not need critical scrutiny and an overhaul itself (it does).

        1. Especially since you pay for a certain number of claims, but if they restrict claims, you do not get that money back. Say you pay for 100 claims, and they restrict you to 50 claims. You don’t get the money back for the 50 restricted claims and if you file a continuation, you again have to pay for 50 claims. (This, of course, ignores the 20 claims for one filing fee and the like, for simplicity’s sake.)

          1. That’s why you shouldn’t file applications with more than 20/3 claims that you get with the basic filing fee. If you need more claims, file another application. Or if you have 10 apparatus claims and 10 method claims and get a restriction, either 1) successfully traverse the requirement or 2) cancel 10 of the claims (to the method or the apparatuas, your choice) and add 10 more by preliminary amendment (to whatever invention you elected). There’s simply no reason not to get examination of 20/3 claims that you get with the filing fee.

            1. “That’s why you shouldn’t file applications with more than 20/3 claims that you get with the basic filing fee. If you need more claims, file another application. ”

              You can try to tell people that all day long, they just don’t get it.

  17. In other words he’s a problem applicant and the poster child for patent reform on the prosecution side.

    “with the BS in a way the office has to.”

    Random I think you’d be surprised at what the uspto really “has” to put up with if it doesn’t want to at the high levels. For example, they just made a requirement of him that isn’t standard.

    1. Random I think you’d be surprised at what the uspto really “has” to put up with if it doesn’t want to at the high levels. For example, they just made a requirement of him that isn’t standard.

      Yeah, that sounds like a concession that his claims should be examined, which is more than what the office should have to put up with. A court could summarily dismiss any complaints. And as the PTO notes in it’s brief – the first one did. In fact, if the PTO allowed the claims it would probably result in some good law about the presumptive validity standard.

  18. I agree with the USPTO that 100,000 claims is quite a few, although it is fairly small compared with the more than 7.5 million claims that I estimate were disposed-of in 2013 (either allowed or abandoned).

    The question is not how many claims, but how much change there is to each claim that causes work issues, and whether the applicant has any intent to actually prosecute. There is probably not a lawyer here who couldn’t completely rewrite a 20 claim set to cause significantly more actual work than their fees cover.

    By the way, since when is one person’s claims from 20 years ago something that should occupy 1.3% (1/75) of the PTO’s work? Not to mention it is primaries doing it. Nobody want to point out the issue that his claims are all specially assigned to primary level people?

    I think the office should just go ahead and allow the claims. A court can fee shift and not put up with the BS in a way the office has to.

    1. And the real culprit in this story is: the doctrine of compact prosecution.

      The ground truth of the USPTO is that 95% of examination focuses on the independent claims, which, of course, define the most expansive scope of the patent. Office actions, interviews, and appeals all focus on the independent claims. The dependent claims are simply along for the ride, unless they are merged with an independent claim as a narrowing limitation.

      Unfortunately, the doctrine of compact prosecution, which requires a full examination of every claim, dependent or independent.

      In some cases, the examination of the dependent claims is helpful. If the a prior art rejection of the independent claims can’t be traversed, the applicant can review the examination of the dependent claims to decide which way to go. Alternatively, an allowance of a dependent claim with an acceptable claim scope may enable the applicant to expedite the issuance of the patent with that claim in exchange for a modestly narrower claim scope.

      But in reality, those cases are few and far between – most of prosecution focuses on the independent claims. And the cost of compact prosecution is very high: rather than focusing on three independent claims, the examiner must distribute examination time over all 20 claims. It’s extremely distracting and a serious misallocation of examination time, and it forces the examiner to make an unappealing choice: spend less time on the independent claims, or make only a cursory, nominal examination of the dependent claims (in violation of compact prosecution?)

      I would much prefer, in virtually every case, that the examiner spend all of the examination time on the independent claims. Unless the dependent claims are dragged up into the independent claims, the examiner should not spend much time on them.

      The USPTO’s dilemma here is of its own making. Compact prosecution is not required by 35 USC or 37 CFR; it only manifests in the MPEP, because it is the USPTO’s creation. In Mr. Hyatt’s case, the USPTO is complaining that it cannot efficiently follow its own rules – and Mr. Hyatt must surrender some of his rights to accommodate the USPTO. Not a very compelling argument.

      1. “And the cost of compact prosecution is very high”

        You’re gd right about that.

        The number one thing wrong with patent examining today is still trying to “examine the whole thing”, including depending claims, in view of of the increasing patent document size and complexity to say nothing of the increasing complexity of the subject matter itself.

        Sure, sometimes there’s gold in the deps. But it’s usually a huge wild goose chase and the increased time/expense just probably isn’t worth it. I just got done with a very long case that was a huge wild goose chase.

        “I would much prefer, in virtually every case”

        So would most every other thinking individual. But you have your hold outs who still think patent prosecution is the same as it was in the 60’s. And a lot of old people are the ones in charge.

        “In Mr. Hyatt’s case, the USPTO is complaining that it cannot efficiently follow its own rules ”

        Amen to that.

      2. And the real culprit in this story is: the doctrine of compact prosecution.

        Factual, I would say compact prosecution is the plurality reason of all patent-related problems, with lack of legal training for examiners being a close second.

        And the cost of compact prosecution is very high: rather than focusing on three independent claims, the examiner must distribute examination time over all 20 claims.

        Well technically this isn’t compact prosecution you’re complaining about here, it’s just prosecution.

        Compact prosecution is not required by 35 USC or 37 CFR; it only manifests in the MPEP, because it is the USPTO’s creation.

        One should examine why this doctrine exists, who benefits from it (as it certainly isnt the examiner) and what consequences result, other than the particular one listed.

        1. “One should examine why this doctrine exists, who benefits from it (as it certainly isnt the examiner) and what consequences result, other than the particular one listed.”

          The examiners don’t benefit from compact prosecution? Being able to blow off substantive arguments from applicants with boilerplate form paragraphs and insert the “This action is final” form paragraph and wait for tickets on the RCE gravy train doesn’t benefit the examiner?

          That’s rich.

          1. “The examiners don’t benefit from compact prosecution? Being able to blow off substantive arguments from applicants with boilerplate form paragraphs and insert the “This action is final” form paragraph and wait for tickets on the RCE gravy train doesn’t benefit the examiner?”

            That isn’t really the “compact” part of “compact prosecution”. That’s just traditional regular ol “prosecution” that you’re talking about.

              1. link to uspto.gov

                Basically in theory it is supposed to be “examine the whole application up front completely” rather than just the claims. Though you must treat all claims on ALL MERITS (all statutes esp) as well. ID as much allowable subject matter as is possible throughout the whole disclosure of the invention (or at least of the elected invention if there is a restriction in place). And also supposedly you’re supposed to write concisely (though the managers in at least one TC don’t understand that part and think that writing a 30 page OA is an indicia of excellence)

                There’s other stuff as well, but those are the biggies I’ll bring up atm. You can check out the presentation for more.

                Here’s a “definition”

                Definition of Compact Prosecution
                Compact Prosecution is:
                z Conducting an initial search which is as complete
                as possible;
                z Citing pertinent art on the record in keeping with
                the scope of the claims as well as significant
                aspects of the disclosed invention;
                z Issuing a complete first Office action which clearly
                explains the examiner’s position on each essential
                issue; and
                z Identifying allowable subject matter in an effort to
                expedite prosecution.

                But there are lots of sub-points under this. Many of which are undoubtably good things to do in any prosecution. But some of which are in the modern prosecution just relics of a bygone era that weigh the office down and create busy work.

                The hilarious thing is that supposedly the examiner benefits. Yeah, rarely.

                In any event, I’m off to compactly prosecute.

                1. The EPO does a fairly good job at “compact prosecution” although they don’t call it that. The examiner searches and identifies D1 (the reference considered the closest relevant prior art) and sticks with it pretty much every time. There’s none of the shenanigans US examiners engage in like citing irrelevant art that is only relevant under the typical examiner BUI and then issue final OA in hopes of generating an RCE. The USPTO could help itself out a lot if they would adopt the EPO’s examination model.

                2. “There’s none of the shenanigans US examiners engage in like citing irrelevant art that is only relevant under the typical examiner BUI ”

                  Idk about that, from the cases I’ve reviewed there is plenty of that. In fact, I don’t even understand what the BUI would be that they’re using to apply the reference. It’s often just a straight up error. Though Idk about their RCE practice or their final practice.

                  “The USPTO could help itself out a lot if they would adopt the EPO’s examination model.”

                  You need EPO laws to be able to help yourself out by adopting the EPO’s examination model. And you need 3 examiner teams to do the examination iirc.

                  Isn’t the reason they stick with D1 because there is a separate person handling the search from those doing the actions etc?

      3. I’m sorry, but I don’t think that breezing through the other 17 claims (e.g., 4 pages of text) before summarily rejecting them based on the same reference as you’re rejecting the independent claims is that big of a burden.

        1. “I’m sorry, but I don’t think that breezing through the other 17 claims (e.g., 4 pages of text) before summarily rejecting them based on the same reference as you’re rejecting the independent claims is that big of a burden.”

          If only you didn’t need a secondary reference for 8 different ones of them then it wouldn’t be.

      4. The problem is not compact prosecution.

        The problem is the double standard applied by PTO management: applicants have to follow all the rules (including rules made up on the spot), examiners don’t have to follow any rules.

        As originally conceived in the early 1960s, compact prosecution was a really well designed quid pro quo, with the right incentives for everyone.

        As it has degraded since 1995 or so (with a total collapse in the Dudas years), it is an extortion scheme pure and simple. Examiners, SPEs, and TC Directors all have compensation based on doing the least work possible per count. Since the first two levels of management are in on the scheme, they do not enforce the half of the rules that require examiners to behave efficiently. They’re in on the collusion to churn counts. Thus, any time counts come into conflict with the law — counts win.

        Since senior PTO career staff all grew up in a corrupt system, they see it as normal — and because it’s the system that got them promoted, they have no incentive to change it.

        One example. I had a conversation with a Petitions Examiner in the Office of Petitions. He stated his view, I pointed out twice that his view was directly opposite the Supreme Court’s, I gave him the cite on the phone, I even pointed him to my Petition where the Court’s exact words were set forth, and I asked him to show me where he had made any attempt in his decision to conform to or distinguish the Court’s view. His exact words, “I’m not getting into the United States Supreme Court.” Man alive — when the highest levels of the PTO career staff think that they have personal authority to ignore the Supreme Court.. Lawlessness is truly embedded in the culture all the way to the top.

        Several sound solutions have been proposed — Hal Wegner circulated one last week. link to laipla.net

        IEEE-USA recommended another solution at link to uspto.gov starting at page 21 —
        — examiner counts should be rejiggered to reward conclusion, not
        churning.
        — SPE/TC Director (and from there up) counts/compensation
        should turn on final disposals, with no contribution from churn.

        “You manage what you measure.” I have had several conversations with PTO staff, at several levels, suggesting that a definition of “efficiency”as “work time per count” has largely displaced any definition directed to final disposal.

        Count reform, a re-commitment to the rule of law, and bilateral compact prosecution, are the keys to much of what ails the PTO.

        1. As it has degraded since 1995 or so (with a total collapse in the Dudas years), it is an extortion scheme pure and simple.

          Meanwhile an order of magnitude more patents have been granted in a shorter period of time than during any other equal length of time in the history of the world.

          Some “extortion” scheme!

        2. “Thus, any time counts come into conflict with the law — counts win. ”

          But let’s be honest. That is just to support the outdated “count system” style of managing. Nobody has the balls or the will to see it go and so everyone does what they need to in order to suceed under the rules of the game. Except your random honest person here or there.

        3. “IEEE-USA recommended another solution at link to uspto.gov starting at page 21 —
          — examiner counts should be rejiggered to reward conclusion, not
          churning.
          — SPE/TC Director (and from there up) counts/compensation
          should turn on final disposals, with no contribution from churn.”

          It’s an ok suggestion except for the fact that it puts too much power in the hands of the applicants to determine when office personel get “credit” for having done work. “Credit” they should get regardless of what happens in any case.

          Right now it is like coming in to work and only being able to really punch the time clock when you finish some specific actions. The way you want it is coming in to work and only being able to punch the time clock when the applicant allows for such to occur. Not gonna happen brosef.

    2. “I think the office should just go ahead and allow the claims. A court can fee shift and not put up with the BS in a way the office has to.”

      Like a broken clock, even you can be correct twice a day. Looking forward to the other one time you’ll be correct. Keep posting, you may stumble into another truth.

  19. Dennis, could you please post the PTO’s brief? I’m really curious to see what other details of Mr. Hyatt’s applications the PTO has made public.

      1. Thanks Dennis, and here is another interesting factual allegation from that PTO Motion to Dismiss: “”Each of thc 399 pending applications purportedly incorporates by reference and claims the benefit of
        priority to numerous earlier-filed applications often dating back into the early 1970s.” Id. Moreover, “[m]any of the pending applications not only claim priority to a web of overlapping, earlier-filed applications, but are also themselves ‘parents’ for the overlapping priority claims of numerous other later-filed applications.” Id.”
        Also noted were recent amendments adding more new claims.

        This would mean that when these patents finally issue some unknown number of them will be claiming a filing date of half a century before their issue date and a term extending 60-odd years from their filing date. Hats off to Hyatt and the PTO, I don’t believe even Lemelson was ever able to keep an application quite that old in PTO cryogenic storage quite that long?
        The last sentence above suggests that different claims even in a single current application may have different valid effective dates vis a vis prior art depending on which earlier application in its claimed chain of prior applications inserted enough “new matter” in its spec to fully support a particular final claim.

        1. Your credit is misplaced Paul, as the suit here is to force the government (the actual party employing the cryogenics) to get off its duff.

          1. Your credit is misplaced Paul, as the suit here is to force the government (the actual party employing the cryogenics) to get off its duff.

            Really? As the brief appears to point out, that the PTO is proceeding on actions on the applications. I suggest a better characterization is that this suit is not seeking to compel action, but seeking to compel a certain type of action. You may want to reconsider which party is employing the cryogenics.

      2. And here, from the PTO’s motion, is the crux of their argument, not just in Mr. Hyatt’s case, but in every applicant’s case,

        “To the extent that Mr. Hyatt is simply dissatisfied with the types of actions the USPTO has been taking in his applications, any
        such complaints are not remediable through a lawsuit under § 706(1) that alleges a failure to act.”

        In other words, the PTO considers itself entitled to get it wrong, no matter how many times it chooses to, as long as they never say, “This is the last time we’re getting it wrong, this decision is final.” That allows the petty lifers over there to carry out their grudges for as long as they want without any consequences whatsoever for their actions. Truly record breaking outstanding quality work they are doing.

        1. “In other words, the PTO considers itself entitled to get it wrong”

          That’s the price you pay for having the entitlement system in place in the first place.

        2. “That allows the petty lifers over there to carry out their grudges for as long as they want without any consequences whatsoever for their actions.”

          I hate to say that you may be right about that. But that is still one of the prices you pay to have the entitlement program in place in the first place.

          1. Why do you hate to say that I may be right? And I am right, of course. I know it. You know it. Hyatt knows it. The petty lifers that have carried out their personal grudges against Hyatt all the while getting promoted for doing “record breaking outstanding quality work” know it. Everybody knows it.

            Why is it one of the prices we pay for having a patent system? Why shouldn’t they be accountable?

            The simplest thing the PTO could do to alleviate a lot of these shenanigans is to simply stop publishing the examiner’s name on the patent. That would get rid of the whole, “Well, my name is going on it and I just don’t FEEL that it’s worthy of a patent” mentality that has rotted the grey matter of far too many of the lifers over there. Not that too many of them had an abundance of grey matter to begin with.

            1. “You know it.”

              I wouldn’t say that I “know it” as I have no direct experience with it. Though I do strongly suspect it from what I hear.

              “Why is it one of the prices we pay for having a patent system? Why shouldn’t they be accountable?”

              Generally it is one of the prices that you pay because the executive branch is entrusted with administering the law and the congress provides them with that flexibility. Of course, congress could take that away, but then they’d likely get so fed up with what issued that they’d just cancel the whole entitlement program.

              As to why these specific people shouldn’t be held accountable I will not say, as in particularly egregious cases there may be cause to have such accountability. Though I do not know the facts well enough in these cases to tell if there even is an egregious case. It may well be an egregious case on the other side if what the PTO says is so.

              “The simplest thing the PTO could do to alleviate a lot of these shenanigans is to simply stop publishing the examiner’s name on the patent. That would get rid of the whole, “Well, my name is going on it and I just don’t FEEL that it’s worthy of a patent” ”

              I’m going to have to disagree that such an absurdity is all that prevalent or would make a dent. There may be some few wackos like that but I’ve never heard anyone talking about their name being on the front that way. Overall I find that they’re far and away more concerned that the law simply forbids allowance for whatever reason they have contrived.

              But you’re right that some “lifers” (and some recent non-lifers) have strange mentalities when it comes to allowing things. I try to alleviate such where I go but alas I can do only so much vs a mindset created via ages and ages. I will also disagree with you that they’re unintelligent. Generally when confronted with straight forward explanations of the law they’ll usually talk themselves into making the right decision if their hand is held enough though they will reflexively recoil from having done such.

              1. “I’m going to have to disagree that such an absurdity is all that prevalent or would make a dent.”

                It’s a free country. You can be as wrong as you want to be.

  20. Sounds pretty lame to me on the part of the PTO. I can’t believe it would be that hard to sort out. Probably isn’t.

    1. Dennis: From my database, I found that – out of the 200,000+ patents issued thus far in 2014, only six have more than 300 claims. (See. e.g., Patent No 8,694,657).

      Here’s the abstract of that patent, filed way back in 1996, many decades before communication between two computers was ever contemplated:

      A system and method communicating via an Internet network, the system including: a plurality of computers connected to a computer system such that one of the plurality of computers, corresponding to a first of the user identities, and an other of the plurality of computers, corresponding to a second of the user identities, can send communications, and some of the communications are received in real time via the Internet. There can be a determination as to whether some of the communications are allowed.

      A reasonable person might wonder what incredible innovations are recited in the claims which permit this awesome hitherto undreamt of functionality. The answer, of course, is: zero. It’s functional handwaving all the way down. Here’s claim 667:

      667. A system to communicate via an Internet network, the system including:

      a computer system including a controller computer that is an Internet service provider computer and a database which serves as a repository of tokens for other programs to access, thereby affording information to each of a plurality of participator computers which are otherwise independent of each other, the computer system in communication with a first of the participator computers responsive to a first authenticated user identity and with a second of the participator computers responsive to a second authenticated user identity,

      wherein the computers are configured so as to allow the first user identity and the second user identity to send communications and to receive communications sent by another user identity on at least one of a plurality of channels, wherein at least some of the communications are received in real time via the Internet network, except that if at least one of the user identities is individually censored, from data in one of the channels, the data presenting at least one of a pointer, video, audio, graphic, or multimedia, and multimedia, by a determination of whether a respective at least one parameter corresponding to said at least one of the first user identity and the second user identity has been determined by an other of the user identities, the data that is censored is not presented by the participator computer corresponding to the user identity that is censored from the data, and otherwise allow the data to be presented at an output device corresponding to the participator computer which receives the data, wherein the computer system facilitates, for the communications which are received and which present an Internet URL, handling the Internet URL via the computer system so as to find content specified by the Internet URL and facilitates presenting the content at the output device.

      Multimedia and audio transmission! With a compooter! Plus you can censor stuff. How? You determine a parameter. Really impressive stuff.

    2. Idk bro, from the sound of it he’s likely making a lot of claims where his incorporated by reference documents are the support. So you have to go track down whether you think he has support for his claims in any of the referenced docs. Could be a nightmare.

  21. Hyatt has 399 pending patent applications that include a total of over 100,000 claims that apparently all have a pre-URAA (1995) filing date. … To move all of this forward, the USPTO has assigned 14 primary examiners to Hyatt’s cases.

    It’s worth pausing for a moment to consider that anybody with some cash to spend could have played the game that Hyatt is playing (and it surely is a game). If the system seems broken today — and it surely does — it was far, far worse back in 1995. Nothing remotely like Hyatt’s actions should ever be allowed to happen again.

    Non-publication is a joke.

    1. Sure, invention thieves want all applications published so they can steal immediately without any threat that the PTO will EVER actually issue patents -unless you’re a large corp with a revolving employment door for ex PTO management or a large campaign contributor. Inventors are not the ones who submarine. It’s the PTO with large infringers pulling the strings. Seasoned inventors know rats when they see them and now protect their creations by trade secret when they can and take the rest to their graves with them.

      1. Sure, invention thieves want all applications published so they can steal immediately without any threat that the PTO will EVER actually issue patents

        There was an article on here not a month ago pointing out the PTO issues about 70-80% of all applications submitted, a number far too high.

          1. Because a comment asking people to think (just like a comment pointing out a pertinent case on copyright law and asking them to read the case) is SO insulting as to merit censorship….

            In other news, antiseptic still causes pain.

        1. Do tell why a random number is “far too high”? Is it because you “feel” that way? We all know you haven’t read more than 0.1% of them, much less their prosecution history. That’s a rather naïve statement.

    2. Anybody with cash can still play this ‘game.’

      Of course, it helps to have inventions, otherwise it does not seem like all that interesting of a game to play.

      1. Anybody with cash can still play this ‘game.’

        Not really, because now every delay by the applicant is delay off of his patent term.

      2. Anybody with cash can still play this ‘game.’

        Yes they can. Thanks for recognizing that.

        Of course, it helps to have inventions, otherwise it does not seem like all that interesting of a game to play

        The existence of an “invention” somewhere in the hornet’s nest is utterly beside the point of “the game” that is being played.

    3. Or if the PTO had examined these applications in 1997, they’d already be expired.

      But yeah, doing what you’re supposed to do is like work or something.

  22. The PTO used to give rejections for undue multiplicity of claims. Why could not that have been done here? Was that rejection based on 112(b) “..The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention..” ? I.e., is several hundred claims to the same invention indistinct claiming?
    In any case, the PTO admission that it stayed prosecution of most of Hyatt’s cases from 2002-2012, [i.e., did nothing at all on what are publicly dangerous “submarine” patent applications which will run for 17 more years as patents after they issue, meanwhile allowing new generic claims to be added to cover various commercial products of the last quarter century] is shocking.

    At least these days someone filing that many claims per application has to pay significantly to do so.

    1. MPEP 2175.05(n) plus good CCPA case law on “undue multiplicity of claims” before watering down by Fed. Cir. decisons.

      1. Undue multiplicity rejections are not based on the statute

        The so-called “Graham factors” for rebutting a prima facie case of obviousness aren’t “based on the statute” either. Somehow that doesn’t seem to bother the “principled” folks who fret about such “activism” in other contexts.

        1. The Graham factors bother me.

          Moreover, IMHO, they seem to have been overridden in favor of something worse, by KSR.

          NO! Its not “obvious to Do” , or do not, it even enough if it is only obvious to try!

      2. But, as I was suggesting, undue multiplicity rejections could potentially be based on the 112(b) requirement for claiming distinctly.

      1. Not only does it screw over Hyatt but it screws over the public.

        PTO should have assigned two examiners to work on them exclusively and continuously starting back in 2002. (Maybe switching examiners periodically if they got tired of examining them.)

        Hyatt paid his fees, and there is no excuse.

        1. screw over Hyatt

          My heart bleeds. Correct me if I’m wrong but didn’t this guy use an invalid patent to make more money than most of us will ever see over the course of our entire extended families lifetimes?

          Seems like he got his fair share of the American dream and then some. Too bad above the combover but, hey, we can’t have everything.

          1. Comments like this are why no one gives your comments any weight. You should care. Treating applicants fairly is a mark of a just society, and this is a Constitutional right that you’re taking from these people. No respectable attorney would make such a comment.

            1. ANY rules – unevenly applied (or applied at a whim and based on “history” – when eight years of other history is ignored – are more than just suspect.

              They are indefensible.

              The executive branch of the government is directed NOT to be capricious, and celebrating capriciousness (for ANY reason) indicates a pathology that in fact runs rampant in that particular poster’s views – as expressed on nearly every thread, no matter what the topic of the thread may be.

              What the H has “combover” have to do with anything?

            2. Treating applicants fairly is a mark of a just society, and this is a Constitutional right that you’re taking from these people.

              The complete lack of perspective says it all.

              By all means wrap yourself in the flag and parade Gil Hyatt around as some sort of example of how brutally unfair America can be.

              Too freaking funny for words.

              1. Again, when you’re advocating for a system that treats people differently because of who they are rather than the merits of their case, it’s hard to take you seriously in any way.

        2. Hyatt paid his fees, and there is no excuse.

          Based on what I’ve seen from Hyatt’s legal filings, there’s plenty of “excuses” to be found.

      2. That it happens is one thing / that it happens by the government is a bit of a different thing.

        You know, think of the rule of law and stuff like that…

    1. That’s an excellent question with no legitimate answer.

      Here’s another: On what basis does the USPTO premise its requirements that this applicant “select no more than 600 claims per patent family,” and “identify the earliest claimed priority date for each claim selected?” What legal authority does the USPTO have for making up new substantive requirements and limitations of patentability at all, let alone for a specific applicant?

      How is this not an obvious violation of rather elementary principles of federal administrative law?

            1. What a thoughtful and well-reasoned response 6.

              Such is so very compelling. I am certainly glad that you took the time to carefully deliberate over the content of you message before sharing it and elevating the dialogue.

              The ecosystem thanks you.

      1. On what basis does the USPTO premise its requirements that this applicant “select no more than 600 claims per patent family,” and “identify the earliest claimed priority date for each claim selected?”

        iirc, a due process violation requires there to be some injury in fact – at some point Hyatt would have to show that he being deprived of some substantive coverage right by not being allowed to have over 600 claims. That’s a tough order – to show that you need at least 601 claims to cover every substantive area of a document.

    2. The applications were stayed during his previous lawsuits, pending resolution in the courts. Remember Kappos v. Hyatt decided by the Supreme Court in 2012?

  23. I agree with the USPTO that 100,000 claims is quite a few, although it is fairly small compared with the more than 7.5 million claims that I estimate were disposed-of in 2013 (either allowed or abandoned). Part of the problem is apparently the number of claims-per-patent-application.

    I’m sure that’s part of the problem. Another problem might be the analysis required for obviousness-type double patenting, which requires that the claims of each application be compared to the claims in many other applications. That’s a challenge that grows exponentially with the number of claims and with the number of applications in each family. Perhaps Mr. Hyatt could speed things along by filing 80 preemptive terminal disclaimers, each citing at least the other members of the same family.

    1. Perhaps Mr. Hyatt could speed things along by filing 80 preemptive terminal disclaimers, each citing at least the other members of the same family.

      That shouldn’t be too hard for Hyatt to figure out. After all: they are his applications.

      Or maybe the problem is that he can’t afford it.

      Right.

      1. The “problem” with that “solution” is that it forces Mr. Hyatt to give up property to which he may be entitled for no reason whatsoever.

        1. The “problem” with that “solution” is that it forces Mr. Hyatt to give up property to which he may be entitled for no reason whatsoever.

          Property to which “he may be entitled”? That’s funny.

          Is that anything like the property that he wasn’t entitled to, which he neverthless got and then capitalized to the tune of many millions of dollars until he was shut down? Gosh, what a terrible tragedy that this incredibly wealthy man would be “forced” to do some work helping to clean up the ridiculous mess that he intentionally created.

          1. I’m not aware of the terrible wrong to which you refer.

            But I do know that two wrongs do not make a right.

            And no one should file a terminal disclaimer because the Office doesn’t want to do its job.

    2. “Another problem might be the analysis required for obviousness-type double patenting,”

      Exactly what I was thinking, and ensuring WD is present. Especially since the 100+ claim WD or enablement debacle that happened a couple of years ago with Hyatt.

      1. “…and ensuring WD is present.”

        In the case Hyatt v. Dudas, the PTO managed to convince the Fed. Cir. that all that is required to establish a prima facie WD rejection is to merely question where any particular claim feature is described/supported, and that shifts the burden to applicant (e.g. Hyatt) to respond and point out where support may be found in the application.

        So again, how hard is it for any one of these 14 primaries to write, “Claims are rejected under 112 for lack of written description. It is unclear where feature X is described.”? You could train a elementary school child to do that. But none of these 14 primaries can do it?

        Puh-leeze.

        1. “In the case Hyatt v. Dudas, the PTO managed to convince the Fed. Cir. that all that is required to establish a prima facie WD rejection is to merely question where any particular claim feature is described/supported, and that shifts the burden to applicant (e.g. Hyatt) to respond and point out where support may be found in the application.”

          This was before that case issued. And frankly while that may be the bare minimum required that is not SOP.

          “Claims are rejected under 112 for lack of written description. It is unclear where feature X is described.”?”

          If we’re doing SOP you don’t write that it is “unclear” where the feature X is described until you’ve checked all the incorporated-by-reference references. And you certainly don’t reject a claim under 112 for lack of WD if you’re merely “unclear”. You need to check that there is no WD present, and be quite clear that there is not, then you reject under 112 for lack of WD. It may be that sometimes the PTO makes exceptions to this and that’s fine. But that is not SOP.

          “So again, how hard is it for any one of these 14 primaries to write, ”

          If we’re doing SOP, first you have to verify there is in fact no WD present. If there are a 100 docs incorporated by ref, you get to go claim by claim through 100 references. The task expands exponentially as has been pointed out already in the thread. Perhaps the PTO hasn’t made an exception for all these cases in that regard or informed all 14 examiners of such just yet.

          1. “If we’re doing SOP, first you have to verify there is in fact no WD present. If there are a 100 docs incorporated by ref, you get to go claim by claim through 100 references. The task expands exponentially as has been pointed out already in the thread. Perhaps the PTO hasn’t made an exception for all these cases in that regard or informed all 14 examiners of such just yet.”

            If that’s SOP, then about 98.73% of the WD rejections I see aren’t following it.

            1. Of course!

              Not many people that I knew prior to my telling them even knew what the WD req is much less how to make a WD rejection. It’s because the office doesn’t emphasis it as much as prior art and people get “training” that never walks them through an actual instance of reviewing an amended (or original) claim for WD when it comes in and then finding an issue.

              But, supposedly they just put 14 crack primaries on the cases, they will likely know what a WD rejection is.

    3. “I’m sure that’s part of the problem. Another problem might be the analysis required for obviousness-type double patenting, which requires that the claims of each application be compared to the claims in many other applications. That’s a challenge that grows exponentially with the number of claims and with the number of applications in each family. Perhaps Mr. Hyatt could speed things along by filing 80 preemptive terminal disclaimers, each citing at least the other members of the same family.”

      Yet another reason the COURTS should be prevented from legislating from the bench. I remind you that obviousness type double patenting is a court created bug-a-boo.

    4. “Another problem might be the analysis required for obviousness-type double patenting, which requires that the claims of each application be compared to the claims in many other applications. That’s a challenge that grows exponentially with the number of claims and with the number of applications in each family.”

      That’s pretty funny. Here’s all the “analysis” you get in the typical OTDP rejection: “Claims are rejected under the judicially-created doctrine of obviousness-type double patenting over claims [INSERT] of U.S. patent(s)/application(s). Although the claims are different they’re not patentably distinct because the rejected claims are just merely broader than the patented/co-pending claims.”

      How hard is that? I just rejected every one of Hyatt’s 399 applications for OTDP in about 45 seconds. Okay, add in about 2 hours for actually typing in all of the patent/application numbers. Of course once you’ve done that, you can cut and paste the rejection for the other 398 applications.

      So what’s the hold up in getting these OA’s out the door?

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