Dear USPTO: Nine-Month Delay is not Prompt Publication as Requied by Statute

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.[1]  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.”[2]

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.

= = = =

[1] U.S. Patent Nos. 7,233,843; 8,060,259; and 8,401,710.

[2] 35 U.S.C. § 122(b).

107 thoughts on “Dear USPTO: Nine-Month Delay is not Prompt Publication as Requied by Statute

  1. 12

    One additional benefit of prompt or potentially instantaneous publication would be the scaling back of the importance of the USPTO’s Private PAIR platform, which at present is finicky and doesn’t support most web browsers.

  2. 11

    There’s a fair amount of discussion throughout the comments here about the negatives of continuation practice in the U.S. My personal view is that perhaps the most positive result of this continuation practice is that it enables the applicant and USPTO to negotiate a compromise as to the claim scope, since the applicant can later present broader claims that can be argued more aggressively. Without the continuation option, the applicant would be more likely to exhaust each and every avenue for maximizing claim scope, thereby increasing the burden on the PTAB and the Federal courts. Claims in issued patents would likely be broader, which has its own societal costs. That’s my simplistic view of things.

    1. 11.2

      Iit,

      What exactly are the negatives of continuation practice in the U.S. that you are seeing***?

      All I have seen so far is some rather nebulous “feelings” about the practice “being a game.” But the main person that expressed that view (being 6), has merely called it a game and lumped it in with any actions by the applicants. The other person leading in with “feelings” has been quiet and has offered zero evidence of ANY wrongdoing.

      That’s hardly a consistent “bad” thing.
      That’s not even a “bad” thing at all.

      What are you seeing that is really something worth considering as “bad”…?

      *** in fact, Iit, MOST of the comments here are already panning the implications the Prof. Crouch lead in with.

      Also, I am mystified by your attempted “logic” of there being some difference in expenditure of time in order to obtain claims. All at once (your theory of what would happen) or strung out over time (your presumption of the current situation) has NO implication that any sum total of time would be different. There is NO difference in “burden” then of either the Office, nor of the courts when it is a matter of mere obtaining of the same end result of claims and claim scope.

      Lastly, your “hypothesis” of “Claims in issued patents would likely be broader” has no tether to reality. And your arm chair observation of “which has its own societal costs” is quite meaningless – for any properly examined claim.

      It sounds as if you quaffed as much Kool-Aid as you could, and then wanted to sound as if you “get” the patent picture.

      You don’t.

      All it sounds like is that you quaffed as much Kool-Aid as you could.

      That’s my simplistic view of things.

      Well, at least you threw that in there.

      But it is just far too simplistic to have any meaning – either in law or reflective of reality.

      1. 11.2.1

        “zero evidence of ANY wrongdoing.”

        It isn’t “wrong doing” Mr. OCPD. It is “doing which leads to a much less than desirable outcome from a certain perspective, i.e. the public’s perspective”.

        1. 11.2.1.1

          Once again 6, you engage in name calling when you are guilty of what you are accusing someone else of.

          Since when did you anoint your views to be the “public’s perspective”…?

          The public benefits from a strong patent system and benefits from applicants obtaining every right that is legally due them.

          I am speaking of nothing more than that.

          You are playing too fast and loose yet again – first with “games” and now with “desirable outcome from a certain perspective” – this namby pamby relativism of yours is meaningless garble, because not all perspectives have equal veracity – you are engaging in the fallacy of “all opinions have the same weight” when CLEARLY informed opinions are much more valuable than uninformed opinions. You just want your feelings (disguised as you “speaking” for a certain perspective) to have more “weight” than what those feelings actually have.

          Your “poker tell” is the retreat to the psy-babble personal sniping of “meds/mental illness.” As soon as you retreat to that empty ad hominem ploy, your very own “game” is lost.

          1. 11.2.1.1.1

            “The public benefits from a strong patent system and benefits from applicants obtaining every right that is legally due them.”

            Not necessarily, and that is only arguable. But setting that aside, yet other members of the public pay for that “benefit”/”entitlement”. Which I know, I know, is a fact which you decline to find.

            “I am speaking of nothing more than that.”

            Mhmmmm, well you should have said that at the beginning and we’d begin to understand why your thinking is so fed from the beginning.

            “because not all perspectives have equal veracity”

            Right, only the perspectives of the OCPD folks among us have veracity, I know.

            “you are engaging in the fallacy of “all opinions have the same weight””

            Hardly.

            “As soon as you retreat to that empty ad hominem ploy, your very own “game” is lost.”

            It isn’t an ad hominem Mr. OCPD. It’s a personality disorder which you have.

            1. 11.2.1.1.1.1

              It’s mindless ad hominem and your game playing, mr. Relativism.

              The fact that everyone has an opinion and that “perspectives” are as plentiful simply does not mean that all perspectives are – or should be treated – equal.

              Your game playing and fallacies are outed.

            2. 11.2.1.1.1.2

              But setting that aside, yet other members of the public pay for that “benefit”/”entitlement”. Which I know, I know, is a fact which you decline to find.

              It is not a fact – so there is no need for me to “decline to find.”

              You cannot define “public paying” for the bargained for Quid Pro Quo (remember that the patent right is s negative right), that’s just more of your silly game playing.

        1. 11.2.2.1

          Ouch, I did not appreciate your Kool-aid nonsense.

          I guess that we are even in that respect.

          But you still have not answered my questions about any substantiated “bad” thing with Con practice. Maybe after you hug your puppy you point out this driver of your emotions…

          1. 11.2.2.1.1

            I don’t believe that I mentioned any bad things regarding continuation practice.

            1. 11.2.2.1.1.1

              This last statement is correct. But read your first statement and my first five paragraphs addressing the point that you put on the table for discussion.

    2. 11.3

      I invented that. Good point.

      I actually prefer prosecuting narrow claims first to broader later. Without the escape valve of continuations, the inventor would get no protection at all until the scope of the broadest claims was finally determined.

      1. 11.3.1

        The option is a good option (and one that I have advised clients on – and have posted about previously) – but Ned, you “congratulate” too quickly and quite miss the point of the post (which lessons the value of the post).

        Let’s not be on such a hurry to be “polite” that we disengage our critical thinking skills.

    3. 11.4

      Yes, those are advantages of the uniquely U.S. serial continuations practice, which allows virtually unlimited claim amendments, including claim broadening, for many years.
      Continuation practice acquired much of its bad name from the many serial continuations of Mr. Lemelson, which kept his applications pending for generations with claims being re-written to cover products of numerous companies introduced years after his applications were originally filed,with effective collusion from PTO docket control failure. It lead to the statutory change of patent terms running from original filing dates rather than issue dates. But that still leaves up to 20 years to re-write pending claims. Furthermore, that term change did not address the difficulty of challenging specification enablement support for such extensively amended claims in either the PTO or the courts. Note that is also not possible to challenge under 112 the claims in most post-grant proceedings unless amended therein.

      1. 11.4.1

        The Lemelson -like parade of horribles is not applicable in the present conversation Paul, given that the original application has been published and all are aware of the full possible gamut.

        As for 112 support, that too is not the applicant’s job as far as checking for the proper level prior to any further grant. Yes, the applicant wants it there – but the role of proper grant remains with the Office in the first instance (and it is a disservice to try to change the focus from the first instance and play the “blame the applicant” game).

        1. 11.4.1.1

          No one could ever have predicted what claims Lemeleson would end up with, any more than you or anyone else can fully predict what all Gilbert Hyatt’s long-pending applications will cover when the PTO finally issues them. Other than in the “unpredictable arts,” broad generic claims of unpredictable scope can be written based on, but not limited to, a single disclosed species it can be read on, and get allowed if the examiner does not find and apply old enough prior art to reject all of them and/or apply all parts of 112.
          [Proper docket control by the PTO would, of course, not allow such ancient “submarine” applications to pend so long.]

          1. 11.4.1.1.1

            Paul, whether anyone could have predicted what claims Lemelson would have ended up with was not the reason for Lemelson’s patents being held unenforceable. It was the fact the file CIP’s of multiple applications so that one could not determine with any reliability what application, if any, supported the claims. As well, it was the long pendency combined with the CIP’s that did Lemelson in.

            Let me tell you story that actually happened to a former employer, but stemmed from events that occurred prior to my joining the company. We needed a new kind of actuator motor for our products, and sought to acquire a company that had a working model. After due diligence, we decided against acquisition and instead we developed an actuator motor which was very similar to the motor of the target acquisition. We were sued for trade secret misappropriation and for patent infringement. The trade secret misappropriation case was dismissed because the technology we were accused of appropriating was disclosed in the patent. We invalidated many of the broader claims that we were accused of infringing based upon a public use proceeding, and redesigned our product to avoid infringement of the remaining claims. But the patent owner filed other claims in a continuation. When they issued, they were confirmed to be patentable over the public use and read on our redesigned products, something our counsel should have predicted, but did not.

            In the end, we settled for the cost of the license we should have paid in the first instance. But to get from here to there, we were out years of litigation expense, and the cost of a redesign. All in all, very bad advise from our patent attorneys, would’nt you say?

            Were it not for continuation practice, we would be to have able to pirate the product of another company for our own use without paying them a dime just because some of their claims were too broad over the prior art, and some of their claims had unnecessary limitations. But nevertheless, we took their invention, ruined their business and in the end we paid for it, as we should have.

            Only in the most infringer friendly advocate would say that we were done in by an abuse of the continuation process. But I would say back to those people, that justice was served.

            This is also one of the reasons that I am very cynical about litigation counsel whose advice is always tailored, it seems to me, to litigate and to advise the client to settle in the end, just prior to trial, for a approximately the same price they could have paid prior to the litigation.

            The only people in a position to stop the bad advice of litigation counsel are competent inside counsel. But how often is it that these people are too cowardly the put their own careers on the line, or who are blocked by General Counsel whose own careers depend upon choosing whether to follow the advice of inside counsel or litigation counsel. We know who they choose. So the system now favors litigation, rather than settlement and respect for patents – and it got 10 times worse with eBay and Seagate. But now that Seagate is overturned perhaps respect for the rights of patent owners will be somewhat restored.

            1. 11.4.1.1.1.1

              Ned, re “I am very cynical about litigation counsel whose advice is always tailored, it seems to me, to litigate and to advise the client to settle in the end, just prior to trial, for a approximately the same price they could have paid prior to the litigation.”
              I think you will find some of those same folks among the most vehement critics of IPRs.
              As for the excellent tactic for patent owners of filing a continuation before issuance and suit on a base patent, when possible, that was not that common a tactic [and thus unexpected] until after Joe Rea and others gave CLE talks on it some years ago.

          2. 11.4.1.1.2

            Paul is just playing the old game of “blame the applicant” without focusing on the area that should be focused on (and under control of the Office):

            if the examiner does not find and apply old enough prior art to reject all of them and/or apply all parts of 112.

            “Not being easy” is no excuse for not doing the job.

      2. 11.4.2

        Paul, I thought GATT TRIPS was the reason we went to 20 years from filing, not Lemelson.

      3. 11.4.3

        According to the District Court, the primary source of the abuse of Lemelson was to file so-called CIP’s that made it impossible for people to determine the priority applications that supported the claims. Without that ability, it was literally impossible to determine whether the late claims had written description support, and whether they were valid over the prior art.

        The Supreme Court has condemned late claiming, but only after a long period of nonprosecution so as to entitle others to believe that the claims would not be pursued, and the district court certainly condemned late claiming in the Lemelson case, but the Federal Circuit, in its decision on appeal from the District Court, did not, if I recall correctly, clearly rest its decision on late claiming – just delay.

        I think the Supreme Court in Crown Cork agreed that broader claims to an invention that are continuously pursued are not an abuse. I expect the basis for this is that the Supreme Court recognizes that the process of prosecution involves a negotiation, and that there is no time limit on that negotiation so long as there is no gap in prosecution such as to allow the public to infer that broader claims will not be pursued.

  3. 10

    While the debate over game playing and potential manipulation is interesting, the bottom line is continuing applications of published/issued patents are not secret. In the old days you could walk into the PTO and inspect any such file wrapper. PAIR is meant to be the electronic equivalent and there is no reason that the applications and prosecution should not be available in public PAIR within a day or two, just like prosecution papers in published applications are available in public PAIR within a day or two. I believe that this is Denny’s point and I completely agree.

  4. 9

    My understanding is that an application will not be published until the filing fees are paid. Since the fees can be paid up to six months after receiving the missing parts, there could always be at least a six month delay if the applicant so chooses. I don’t know if the requirement to pay the filing fees before publication is just USPTO procedure or actually present somewhere in the code.

    1. 9.1

      patent leather, the simpler explanation is that the applicant requested non publication which keeps the application secret by statute.

      1. 9.1.1

        Will have to check but at first glance I am pretty sure that one cannot request non publication of a continuation application from which the parent has been published.

          1. 9.1.1.1.1

            Thanks pl,

            I know about the PCT limitation, but was thinking of something else.

            I thought that I had a reference dealing with a Con and a published parent that drew a parallel to PCT situation from the de facto rationale underlying the PCT loss of ability to invoke non-publication (not just that entering a mechanism that requires publication, but that implicated the “has actually been” published status), but I have not been able to put my fingers on it.

            Since the US has a “no new matter rule,” for a true Con, it just does not make sense to be able to claim “non-publication” after the horse has left the barn and the sum total of what the Con could ever hope to achieve has already in fact been published.

            1. 9.1.1.1.1.1

              Sure it does. The sense of it is the very reason Dennis wants these published. To see what is being claimed. One might want to keep those specifics private even though the spec is public knowledge.

              Kinda like the reason the Gov’t kept saying Area 51 didn’t exist.

              1. 9.1.1.1.1.1.1

                “What is being claimed” is not anyone’s business though, Les.

                As I mentioned to Malcolm, this is nothing at all like some thing before Congress. The be all and end all of what could be claimed IS out in the public.

                Anything more is merely being officious and intrusive to the ex parte process.

                This has no relation whatsoever with any type of Area 51 item.

                1. Who gets to say it isn’t anyone’s business.

                  Maybe someone wants to help the examiner by sending the examiner art that the examiner might not otherwise be aware of.

                  There is something to be said for nipping things in the bud.

                  link to youtube.com

                2. Who gets to say it isn’t anyone’s business.

                  The nature of examination.

                  Until they change examination to an open and public participation model, what you seem to want here is simply not what is in place.

                3. No, Les – it is not in place – not as you seem to want it.

                  Do you realize that we are talking about ex parte prosecution here?

                4. It is a rare Office Action indeed that is issued prior to publication…

                  That’s a bug and not a feature.

                  If you recall correctly, the Office “promised” a timely (and thorough) first and best shot PRIOR to publication*** (at 14 months – four months prior to publication so that the applicant can decide, if desire, to pull the application from publishing).

                  As alluded to Ned, this mere promise of maintaining the Quid Pro Quo, and the subsequent lack of delivering, is a very real problem and degradation of the Quid Pro Quo. Now, for “convergence,” and even more degradation, we have people wanting(and even worse, not bothering to even check themselves as to the meaning of that “want”) to have nigh instant publication.

                  Publication satisfies the Office end of the bargain – and satisfies it completely. Why bother (other than to show a ‘front’ of actually completing the bargain) doing ANY examination in a timely manner, once publication has happened, and the Office has it’s milk? (buy the cow? heck, it’s “free” milk as far as the Office is concerned).

                  ***See 35 USC 154 link to uspto.gov

              2. 9.1.1.1.1.1.2

                Also Les,

                My immediate point here was that if the parent of a genuine Con has been published, I thought that I had a reference that stated that the child could not have a non-publication request.

                This point moots what you are attempting to reply with.

                1. Yeah well, I looked for such a rule too and couldn’t find it so… I think you dreamed that one up.

                2. LOL – I may have – as you might see below, I have even asked Ned if he has seen such a reference.

                  But if it turns out that I just dreamed it up, my dreams show powerful logic at play: given that the basic reason why one cannot claim a request for non-publication is that the same “stuff” is published elsewhere – even in a different sovereign, it only makes sense that if your Con is already published in your own sovereign that you should ALSO not get to claim the non-publication avenue.

                3. Actually, the reason is that the same stuff is REQUIRED to be published elsewhere.

                  In a continuation, the claims are different, so, its not the same stuff either.

                4. Les – you keep on missing the point that we have a “NO new matter” rule. This means that ANY possible claim is already contained in the material that has been published.

                5. …you also seem dense to the correlation between that requirement and the specific fact pattern of what I am talking about of having actually been published.

                  You are stopping your thinking at the “require” stage – re-engage that thinking and go beyond the “just required” and go one “why” deeper.

                6. I am not missing any point. What is disclosed and what is claimed are two different things. That is why Dennis is curious about what is being claimed in the present application.

                  I like things just the way they are. Actually, I think prosecution should remain secret like it was in the olden days. That’s not the point.

                  The only think I am taking issue with is your assertion that since the parent was published there is no need to open the prosecution of the child. That is just wrong. For one thing, members of the public might want to make their own judgement as to whether the new claims include new matter and might want to make their own judgement as to whether the new claims read on the prior art or something obvious in view of the prior art.

                  If there is nothing different about the continuation from the parent, then what is the point of the continuation.

                7. Your “wanting to make your own opinion” is a “want to” and is officious. An applicant is free to choose any level of claim within the larger as filed and already published application. What happens if an applicant chooses only a small sliver and then seeks a broadening reissue within two years? People are confusing the “what they want” with some self-appointed “what is right,” and accusing anyone in the realm of difference of “playing games.” That is simply anti-patent CRP

  5. 8

    Dennis,
    I agree that the PTO should publish these applications “promptly.” However, your article gives the wrong impression that the PTO has no substantive work prior to publication; that it need only format the application and submit it to the printing process. That is incorrect. Prior to publication, the PTO must review the application and the claims to determine its primary and secondary classifications (i.e. original and cross-reference classifications). MPEP § 903.04. Classification examiners must do this work and the PTO is known to be short on such resources, having made significant relative cuts in the classification examiner force. I have written about this problematic trend and the importance of restoring a robust and rich classification system at the PTO (see Figure 1 and related text in my article at link to j.mp). To my knowledge, since my article, classification resources have lagged behind and are not augmented commensurately with workload. The delay we see in publication is very likely due to this classification bottleneck in several technology classes.

    That said, I am not convinced that these delays are not justified given the constrained resources the Office is working with. Assuming (while not justifying) these constraints, the PTO can arguably increase the number of classification examiners by taking them away from art units engaged in examination. This will shorten publication delay at the expense of patent pendency. The PTO may have made the correct judgement that the relative harm of the latter may dwarf that of the former. Your post’s suggestion that there is much harm in the former is unsubstantiated and misleading.

    First, your post points to the PTO’s delay in publishing the continuations claiming priority from the 2003 parent application in which the applicant did not request non-publication under 35 U.S.C. §122(b)(2)(B). Your post apparently implies “submarining” by alleging that “[i]t is these late-family applications where applicant game playing is most likely.” This notion is counterfactual because the applicant had no ex ante knowledge, nor any control, of the PTO’s ex post delay in publication. There can be no “game playing” here. Had the applicant intended to “game play” or delay early publication of the subject matter, it would have filed the 2003 parent application with a request for non-publication, which it did not do.

    Second, the alleged harm of unpublished continuations claiming priority from a published parent is highly overblown because the disclosure of any subject matter that can be claimed is available. The notion that innovators can rely on the boundaries set by claims presented in continuations, had they been published early, is a red herring. This is because even if such continuation claims are made public immediately, the public cannot ignore any disclosed but unclaimed subject matter, which may ultimately be subject to an amended claim, or a claim presented in subsequent continuations. If examiners are able to determine based on the disclosure what could be claimed, as they are required to classify “disclosed but unclaimed” subject matter in cross-references (MPEP §§ 903.04, 903.07(a)), so can any interested member of the public.

    A decade past the ill-conceived and unlawful continuation rules, it is time to put to bed the misleading rhetoric and the false folklore about continuation applications that gave rise to these proposed rules in the first place. For understanding the real and legitimate purpose of such applications and a detailed debunking of this folklore, see my article “Patent Continuations, Product Lifecycle Contraction and the Patent Scope Erosion.” Southern California Law Associations Intellectual Property Spring Seminar (2007). link to bitly.com

    1. 8.1

      While I agree with Ron that much of that could very well be the case I must note that when he’s discussing:

      “The notion that innovators can rely on the boundaries set by claims presented in continuations, had they been published early, is a red herring. This is because even if such continuation claims are made public immediately, the public cannot ignore any disclosed but unclaimed subject matter, which may ultimately be subject to an amended claim, or a claim presented in subsequent continuations. If examiners are able to determine based on the disclosure what could be claimed, as they are required to classify “disclosed but unclaimed” subject matter in cross-references (MPEP §§ 903.04, 903.07(a)), so can any interested member of the public.”

      All that is also true, but it does not mean that the applicant may not very well be engaging in some game playing. It happens routinely.

      “Second, the alleged harm of unpublished continuations claiming priority from a published parent is highly overblown because the disclosure of any subject matter that can be claimed is available. ”

      As to whether or not the game playing is harmful I will leave to other people but I would say it is at least “less than ideal”. In the ideal then people get notified on first issue of the scope of everything that ever could be validly claimed that also will ever be claimed in the patent, at least on the elected invention (if a restriction was imposed). But that often does not occur. It’s an inefficiency in the system the congress has chosen to allow.

        1. 8.1.1.1

          Yes, applicants play games. Just like the other 7 billion people on the planet.

          Remember:, folks: the defenders of the worst attorneys on the earth are very, very serious people. We have to pay attention to them! Because “expectations.”

            1. 8.1.1.1.1.1

              Are you really that obtuse?

              Aw, c’mon. Now you’re just playing games like the other 7 billion people.

              Probably one of those games is bingo on a computer which is, like, the awesomest game ever invented.

    2. 8.3

      It’s almost as if Ron Super Serious Expert Katznelson has never seen an applicant claim — and be granted a patent on! — subject matter that is described nowhere in the specification.

      Like that never happens. Like those claims are never sought, and those patents are never asserted. It’s so “misleading” to talk about such “folklore” so please, Dennis, please stop it already. Mkay?

      Thanks. Now watch this drive!

      1. 8.3.1

        Thanks. Now watch this drive!

        Yes, your attempted derogatory anti-patentee comment missed the point at hand – as usual.

        Ron K was much too polite for giving you credit for identifying a problem unconnected with Prof. Crouch’s whine on timing delay.

        But hey, go ahead and “pile on” with the non sequitur – after all, it is a slam against patentees so that must be always “pertinent” (no matter what the actual topic of the thread may be – or so imposes the self-anointed watcher over the fields of rye). ;-)

    3. 8.4

      Ron, first of all, I appreciate your attempt to turn this blog’s comments section into a place for meaningful discussion, something it stopped being years ago. But I guess that’s true of most sites with free, unmoderated comments sections.

      Concerning the possibility that classification constitutes the bottleneck in publication of applications, the statute merely says that applications will include information that the Director decides to include, and Rule 1.215, which seems to be the relevant rule, says nothing about the inclusion of classification information. In fact, the only places in the Rules that seems to refer to classification are in the pre-AIA Rule 1.76 discussing application data sheets, where it says that an applicant may choose to include a suggested classification, and in Rule 5.5(e) about accessing applications to which a secrecy order has been applied. So while the Office includes classification information on the cover of printed applications, I don’t know where the requirement to do so comes from.

      Which leads to the question, if including that information is slowing down publication, why bother including that information on the printed document? Print the application, and then later, after the application has been classified, add the classification information to the online version.

      More to the point – what I think Dennis was getting at, even if he (like me, before reading your comment) was unaware of the classification-as-rate-limiting-step issue – why bother typesetting the application for publication? Just publish the documents submitted by the applicant without typesetting them, and make pdfs of the documents submitted by the applicant available online (which is what happens in the IFW anyway). WIPO doesn’t typeset the applications that it publishes, why should the USPTO? In my neck of the woods, the Israel Patent Office doesn’t bother with the formality of physically publishing printed applications on paper, it just makes the documents submitted by the applicant available online 18 months after the earliest priority date or as soon thereafter as possible. The result is that national phase applications filed at 30 months and divisionals of old applications are generally publicly available from the ILPTO within a month of being filed. Inasmuch as the IFW *is* the official record, and it’s there from day one, there’s no good reason the USPTO couldn’t do the same.

      Relaxing the criteria for publishing new US applications – or rather, making applications publicly available – would also remove some of the admin side headaches that the pre-exam people (those drones without phone numbers in what’s currently called the Office of Patent Application Processing, OPAP) create, ostensibly because the papers submitted by the applicant don’t avail themselves of publication but more often because, apparently, the USPTO is looking for additional fees.

      Turning to Dennis’ comment about applicants “game playing” with late-filed continuations, I agree that that’s an inappropriate characterization. To perhaps beat a dead horse, often the PTO gives applicants less than they’re entitled to, so continuations are appropriate. Or due to restriction requirements and budgetary constraints, it may be necessary to prosecute several applications in series rather than in parallel. Even in cases where a continuation is filed many years after the original filing, in an attempt to obtain claims that will better capture a competitor’s infringing activity than earlier-granted claims – what I assume Dennis means by “game playing – I see nothing wrong, provided those claims meet the requirements of 112.

      I also agree with you that in principle that with some effort, interested third parties can tease out from the published parent application the claims should be allowable and those than shouldn’t, at least in the areas in which I tend to work. Unfortunately, I’ve seen too many late-filed cases allowed in certain art units with claims of suspect 112 compliance to be comfortable relying solely on the parent disclosure and the acumen of the examining corps. Sure, you can give the client an opinion that those claims won’t hold up in court, but if it’s a client that can’t afford to go to court, that’s a small comfort. At least with the advent of PGR, nowadays one can monitor the grant of new patents and challenge those on 112 grounds before the PTO, if necessary, even if the application is published late or not published at all prior to grant.

      Finally, one comment about the lack of just about anyone prominent focusing on the nuts-and-bolts of patent prosecution. Dennis’ complaint goes to a basic issue in patent prosecution, and your comment explains why there’s often a delay in publication. But this issue only hit Dennis’ radar because he was looking for some file histories; if he was still involved in patent prosecution, he’d have been aware of the issue a long time ago. There are many, many problems with OPAP that get no attention in this blog or in other prominent fora, like AIPLA meetings. That’s a shame, because those problems – like letters from the PTO concerning ostensible formalities defects that don’t actually explain the defects, and the inability to directly contact the formalities examiner – are a huge waste of resources for both applicants and the PTO. But until attention is focused on them by some big names in the field, I doubt we’re going to see significant improvement in these areas.

      1. 8.4.1

        Dan,
        First, I agree with you (and with MM @ 8.3) that many late-filed cases are allowed in certain art units with claims of suspect 112 support. However, their original form as filed cannot be actionable; only allowed claims (after an average of 2.3 office actions) are important. Even if one wishes to track the claims during prosecution, the nine-month delay in publication would be of little import because it would still publish before or nearly at the time of the first office action. This means the nine-month publication delay does cause one to miss much in tracking the claims as they progress in prosecution. In the whole scheme of things, these delays are the least of the problems we have with PTO performance.

        Second, while the classifications of published applications are not mandated by statute, their utility for searches of prior art is incontrovertible. Prepublication of raw application submissions without classifications and without the uniform formatted fields (which can then be automatically captured as key metadata), would duplicate costs and resources. As indicated above, the incremental value in publishing a raw version 4 months earlier can hardly justify the extra cost and complexity.

        1. 8.4.1.1

          Correction: “This means the nine-month publication delay does not cause one to miss much in tracking the claims as they progress in prosecution.”

        2. 8.4.1.2

          Ron,

          You are too kind to this site’s biggest blight.

          You also make a (relatively small) error in not noting that Malcolm was playing the “blame the applicant” game for the non-performance of what is the job of the Office (examining to make sure that any such late developments have proper 112 support).

          I doing so, you run the risk of “validating” the attacks on applicants that has been Malcolm’s meme for a decade now (and appear to aggravate the lack of proper focus on the Office doing its job of proper examination).

          Your politeness, while in normal circumstances would be commendable, do more to “feed the wolf at the back door” in the present context.

      1. 8.5.1

        Ron’s point includes the fact that for actual continuations, there is no need for immediate publication as the “no new matter” rule already provides that the sum total possible in said continuation has already been published.

        1. 8.5.1.1

          The argument that “you already know everything that could possibly be claimed so what difference does it make what is actally being claimed” is very, very silly indeed.

          You could say the same thing about some new tax codes being debated in Congress. Why does the public have to see them before they are passed? They’ll fall within the Constitution so just deal with it.

          1. 8.5.1.1.1

            That’s not the argument – note the critical aspect of timing.

            Come back when you are not consumed by your rye field watch duties.

          2. 8.5.1.1.2

            You could say the same thing about some new tax codes being debated in Congress.

            Wow – sorry I had to read this again, but talk about your false equivalencies…

            Your congressman is no way like someone else’s patent examiner (let alone your other false equivalence that a patent is like some “private law”).

            You do realize that patent prosecution is an ex parte process, right?

    4. 8.6

      Dennis –

      Well, it isn’t nine months yet…. (only 8, or 4.5)

      From US Patent No. 8,060,259…..

      14/954,886 filed on 11-30-2015 which is Pending claims the benefit of 11/764,145

      15/080,578 filed on 03-24-2016 which is Pending claims the benefit of 11/764,145

    5. 8.7

      If anyone really wishes to inspect those filewrappers and is willing to pay for them, they could always go “old-school” and get them as paper records:

      37 CFR 1.14(a)(1)(v) Unpublished pending applications (including provisional applications) whose benefit is claimed.

      A copy of the file contents of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the benefit of the application is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has issued as a U.S. patent, or in an application that has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3). A copy of the application-as-filed or a specific document in the file of the pending application may also be provided to any person upon written request and payment of the appropriate fee (§ 1.19(b)). The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section.

      1. 8.7.1

        Mark, it is my understanding that these applications have no later patents claiming priority to them.

    6. 8.8

      “Classification examiners”. The USPTO did away with these long ago (to the detriment of the classification system). Initial classification of applications has been outsourced to the lowest bidder, and in continuations it is almost always the same classification as the parent.

  6. 7

    Have you tried filing an FOIA request? It seems that based on the “prompt publication” requirement, you should be able to argue that you were entitled to access even if the file was not yet available on PAIR.

      1. 7.1.1

        Ned,

        See 9.1.1.1.1 – I cannot seem to find the reference I was thinking of – does this ring a bell for you?

        1. 7.1.1.1

          35 U.S.C. 122(a) specifies that, subject to (b) the default rule is secrecy for an application. 122(b) says that an application will be published unless a non publication request is made. So if it a NP request is made, the application is secret.

          A NP application request can be made in any application that is not filed in a foreign jurisdiction that publishes applications.

          Now, if an application has never been filed in such a foreign jurisdiction, it remains subject to a NP request.

          Now for a twist, and it happened to me. Consider that provisional are not subject to publication by statute. What happens if one files a non provisional with no NP request and converts same to a provisional? What should happen? And, you can guess what happened in my case.

          1. 7.1.1.1.1

            Thanks Ned, as I mentioned to Les above, I may have dreamed this up, but I seem to remember this being a decided case with different facts.

            Certainly, if for the parent, the right of non-publication has been preserved, a child Con can also claim a right to non-publication***.

            But the facts I laid out are different in that the parent not only did not avail itself of the right of non-publication, but has – in fact – been published.

            I want to recall (again, perhaps this was just a dream), that the case made the point that the rationale for the mere engagement in the process of x-US publication standing in the way of non-publication in the US certainly could not provide more benefit than actual publication in the US.

            While the instant example of this thread has been answered by Paul Cole above (that answer being that NO non-publication request could have been filed), our discussion still holds interest for a fact pattern that does not include Paul’s revelation.

            1. 7.1.1.1.1.1

              anon, historically patent applications remained secret even when the invention described and claimed was otherwise publicly disclosed or in public use. The point of secrecy was therefor to maintain in confidence the back and forth between the examiner and the applicant, and any claims/amendments.

              All people had to do was mark “patent pending” on their products to protect them. They did not have to give the application number nor allow infringers access to the examination so that they could “avoid infringement.”

              But the day of coddling piracy is upon us. Inventors are labeled trolls, and piracy is labeled innovation. Welcome to the world of Big Brother.

              1. 7.1.1.1.1.1.1

                Attempting to rescue from filter:

                Ned, I can go into great length as to how an earlier
                0x y m0r 0nic
                “help the inventor” step by Congress set into motion a bevy of ills (by messing with the original Quid Pro Quo and taking their “cut” early with pre-grant publication, but I was hoping rather to focus on the more direct case cite (if one exists) at hand.

                I could swear that I am not dreaming this as I remember (or want to remember) that I would have worded the decision a slight bit differently.

                1. anon, I researched this issue quite a bit once, and found nothing. I see nothing in the statute that prevents one from filing a NP request except if one files the application outside the US or PCT.

                2. Ned / again / I was thinking that was from the judicial side (and not the statute itself) – that’s why I am asking if you remember a case… (it would have been a judge making the comparison between the “required to publish x-US” AND the actually HAD published in the US.

              1. 7.1.1.1.1.2.1

                Paul’s post was (inadvertently?) on another thread.

                He mentions that the family of three – or more particularly, the US parent had a PCT equivalent that trips the “cannot request non-publication” flag.

  7. 6

    “[A]pplicant game playing” is a bit harsh. One could characterize keeping child applications in play in the opposite way: “applicant mitigation of capriciously shifting legal paradigms, to preserve at least some protection against theft of valuable operating company innovations.”

    Everyone should agree on the major point, of course. The USPTO should improve its timeliness in laying open files that should already be public.

    1. 6.1

      >>>“applicant mitigation of capriciously shifting legal paradigms, to preserve at least some protection against theft of valuable operating company innovations.”<<<

      It's more than that. Unlike much of the world, in the US, in IPR, you have no effective ability, and in US litigation, you have no ability to amend claims to save portions of a patent on an invention over material prior art which is later unearthed by others. A side trip to the USPTO Reexamination Unit doesn't get the job done in a timely fashion. Reissue is even more problematic on many levels. So, the path of minimum risk with reasonable cost is to use as many divisionals and continuations as possible during the life of a valuable patent portfolio. If you want to change the current absurd continuation application scheme, fine, then change the law and/or regulations in the US as necessary to assure patentees an opportunity to timely obtain amendments in various forums so that they can obtain and maintain claims to provide appropriate protection over later unearthed prior art. The PTO could get rid of a bunch pending patent applications if such changes were made. So much for the old harmonization mantra….

      1. 6.1.1

        in IPR, you have no effective ability… to amend claims to save portions of a patent on an invention over material prior art which is later unearthed by others

        This is a l i e.

        Pretty sure I don’t need to point that out but it’s important not to excite your fellow cheerleaders too much.

          1. 6.1.1.1.1

            You forget to add “of right” and Malcolm was being pedantic (or course, because it pleases himself)

    2. 6.2

      Robert, any patent owner who does not keep a continuation pending with respect to a valuable invention is simply a fool. Prior art can emerge. Infringers can adopt insubstantial substitutions. Limitations once thought necessary and that stand in the way of infringement can be removed. The first prosecution is far from perfect from a patent owner’s perspective and every patent attorney practicing knows this.

      Infringers play games to pirate the substance of the invention all the time. The idea that it is patent owners who play games and only patent owners who play games is offensive propaganda.

  8. 4

    Dennis –

    Have you tried this:

    if you need help:

    Contact the Patent Electronic Business Center at (866) 217-9197 (toll free) or e-mail EBC@uspto.gov for specific questions about Patent Application Information Retrieval (PAIR).
    If you experience technical difficulties or problems with PAIR outside normal Patent Electronic Business Center hours (M-F, 6AM to 12AM ET), please call 1 800-786-9199.
    Send general questions about USPTO programs to the USPTO Contact Center (UCC) .

    I’d suggest sending an email… Though calling the 800 number would probably provide more fuel for another blog post.

  9. 3

    Until the claims are under examination, access to the file wrapper is not very helpful. Applicant can actually play more games AFTER it is published and prior to examination (for example, by filing misleading claims with the initial filing and submitting a preliminary amendment prior to substantive examination).

    That said, the handling as described above cannot be reasonably considered to have been done “promptly,” but it appears to be an outlier anyway.

    1. 3.1

      Mark, again, you and others here are simply assuming there has been no non publication request.

  10. 2

    Does 35 U.S.C. § 122(b) overrule non-publication requests?

    Does § 122(b) require prosecution correspondence to be laid open, or just applications to be published? If the latter, wouldn’t the publication requirement have been met by the publication of the parent?

    1. 2.1

      Robert, If the application has not been filed outside the US, it literally remains subject to secrecy. Thus, a secrecy request may be made in a continuation just as much as in the parent.

      Even though the parents are published, the continuations appear to be subject to a secrecy request.

      1. 2.1.1

        Ned – by secrecy request do you mean non-publication request or are you changing the topic again?

        If you mean non-publication request, then I think you are simply agreeing with the point Robert was making.

        Are you not?

      2. 2.1.2

        Les, the statute reads,

        “Except as provided in subsection (b), applications for patents shall be kept in confidence by the Patent and Trademark Office and no information concerning the same given without authority of the applicant or owner unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director. “

        1. 2.1.2.1

          Ned – I responded to this by pasting in 37 CFR 1.213. It must contain some profanity, as it is awaiting moderation.

          ….sigh…

  11. 1

    Do you have some (any?) evidence of improper game playing because publication has not been prompt…?

    Other than your inconvenience, it seems like just gen eral whining here.

    Now on the other hand of applicants are “playing games” (which is doubtful, since the time frame for actually using the results of the applications WILL no doubt stretch into when they are published), THAT evidence and complaints there with would be of interest.

    This just seems like “piling on” applicants for something that they do not even control.

    1. 1.1

      “This just seems like “piling on” applicants for something that they do not even control.”

      He was talking to the gov not the applicants.

      1. 1.1.1

        …but you missed the implied slam ON applicants – that’s why I asked for the evidence that such a slam was “viable.”

        Hint: there most likely is NO such evidence and hence, the comment on “piling on” IS pertinent.

        1. 1.1.1.1

          Saying that they’re playing games sometimes is not a “slam”. It is a finding of fact anon.

          1. 1.1.1.1.1

            LOL – you want that “finding”…?

            Then give me the evidence.

            You will not because you cannot.

            (see also Ron K’s taking Prof. Crouch to the woodshed)

            1. 1.1.1.1.1.1

              “You will not because you cannot.”

              Sure I could. I have several people pending before me at this very moment game playing in cons. It’s par for the course on any given month. I’m quite sure near every examiner has the same thing going on at least once or twice a year.

              They come in, they claim something they know is likely sure to be rejected on the same art as before in the parent, and then try to wiggle as small as they can to get around it in every round of prosecution (all while crying, sometimes, about how little prosecution they get during a whole round of prosecution that they’re wasting playing games lulz) often just keeping the continuation chain alive. It’s fine if they want to do that, but “game playing” is a perfectly legit way to describe the phenomena. Just because you don’t do it doesn’t mean that other people do not. It’s arguably a legitimate way for them to arrive at the very maximum scope they can get out of the office.

              1. 1.1.1.1.1.1.1

                That is some world class dissembling back peddling and goal post moving 6.

                Your problem (one of many) is that this “game” is played regardless of any delay of publication so it cannot be what Crouch is alluding to.

                1. You should not be name calling – and that name in particular – when you are the one that is clearly mentally deficient – read my post again; the “games” that you postulate are NOT linked to the timing aspect. You need some other “games.” And yes – my (pertinent) call for some (any) evidence would add value to the fleeting (and unsubstantiated) accusation. That’s one of the points for asking for evidence.

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