by Dennis Crouch
In researching for my recent essay on Electric Power Group, LLC v. Alstom S.A. (Fed. Cir. August 1, 2016), I looked into the family of the three invalidated patents. As I expected, the patentee has at child-applications still pending.
- Application No. 14/954,886 filed on 11-30-2015 which is Pending; and
- Application No. 15/080,578 filed on 03-24-2016 which is Pending.
Following the court’s decision, these likely will be (or perhaps already have been) amended in attempt to recapture coverage lost by the invalidations. Unfortunately, we don’t know what is happening with these cases.
Although both of these pending applications apparently claim priority back to a 2003 application and multiple issued patents, neither file-history is publicly available via PAIR since neither application has been published. This, despite the statutory requirement that applications “shall be published . . . promptly after the expiration of a period of 18 months from the earliest filing date for which a [priority] benefit is sought.”
The 9-month delay in publication here is inappropriate and problematic. When an application already qualifies for publication as of its filing date, then it should be immediately published and the file history automatically laid open for public inspection and consideration. It is these late-family applications where applicant game playing is most likely. And, although public access is not a cure, it can help address some of the potential issues.
It turns out that most continuation and divisional applications are published about 4-months after filing even though the 18-month date had already passed as of the filing date. That delay is already unduly long, it is unclear why the PTO has taken so much longer with these cases.
Moving forward, the USPTO Director is already empowered to make this change. Technological feasibility can perhaps justify the historic delay. However, a multi-month delay can no longer realistically square with the requirement that applications be published “promptly” following the 18-month date.
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 U.S. Patent Nos. 7,233,843; 8,060,259; and 8,401,710.
 35 U.S.C. § 122(b).