Pre-GATT Applications

One small aspect of Director Michelle Lee’s testimony to congress was that the number of pending pre-GATT applications still pending has been reduced to only 20 – not counting those owned by Gill Hyatt. (She did not mention Hyatt by name, but it was clear who she was talking about.)  The PTO has 14 full time patent examiners going after these remaining applications that were all filed prior to June 7, 1995.

These pre-GATT applications are important because they retain the 17-year-from-issuance term.  An example is Patent No. 9,376,478 that was recently issued to the Japanese Foundation for Cancer Research and broadly claims: “2. Recombinant Human fibroblast β1 Interferon.” The application was filed June 5, 1995 and looks to be enforceable until 2033.  (This particular case was delayed by an interference proceeding).

Gilbert Hyatt apparently continues to have a substantial number of pre-GATT applications pending and is fighting multiple lawsuits against the Government regarding the applications.  According to his own court filings, Hyatt has more than 400 pending applications, most of which have been pending for over twenty years and more than a dozen pending for more than 35 years.

In Hyatt v. OMB, Civ No. 16-1944 (D.Nevada, Filed August 16, 2016), Hyatt explains that he “has experienced first-hand the unnecessary, duplicative, and overly burdensome information collection demands that the PTO imposes on individuals seeking patents.”  The lawsuit asks for an order that the OMB consider Rules 111, 115, and 116 (37 C.F.R. Sections 1.111, 1.115, and 1.116) and hold them subject to the requirements of the Paperwork Reduction Act.

In Hyatt v. USPTO, Civ. No. 16-1490 (D.Nevada, Filed June 22, 2016), Hyatt asks for injunctive relief to stop the PTO from repeatedly ‘reopening prosecution’ in his cases and consequently shielding the cases from judicial review by either the PTAB or Article III courts.  Hyatt is experiencing the common reality of examiners reopening prosecution once an appeal brief is filed.

Background:

79 thoughts on “Pre-GATT Applications

  1. 8

    I’m someone who usually thinks that the office is the bulwark of the public against people trying to claim more than they are entitled to, but I’m the other way on this one – the office should just allow all the claims and let the public deal with the situation. The larger underlying threat to the public is the submarine nature, and the office can essentially force the claims to surface. It’s not like the intervening years haven’t created an infrastructure for dealing with claims, good or bad.

    1. 8.1

      Normally you are wrong for other reasons – here you change, AND you are still wrong.

      That’s a special skill you have.

    2. 8.3

      You can’t really solve the problem that way, because the applicant can just file Yet Another Continuation before they pay the issue fee.

      1. 8.3.1

        Continuations filed after June 8, 1995 will not have a 17 year from issue date term, but rather a 20 year from earliest claimed priority date term. So any continuation Hyatt filed today, or any day after, will probably be expired as soon as he filed it.

    3. 8.4

      Re: “the office should just allow all the [submarine] claims and let the public deal with the situation.”
      That is what happened with many Lemelson submarine patents. Are you aware of what that caused? Billions in legal costs for hundreds of companies, inability to even get accurate sets of the Byzantine-chained file histories, and years of legal studies and litigation, until two small companies finally prevailed on prosecution laches after almost everyone else had given up trying to deal with the situation. [Due credit to smart licensing-level [individual pain-threshold level] tactics by Lemelson’s attorney, Jerry Hosier.] It was a bonanza for many, many, law firms [at great expense to their clients]. So much so that the AIPLA amicus committee and others decided it was conflicted from filing an amicus brief when the situation finally got to the Fed. Cir.
      It is hard enough to get some patent attorneys and PTO examiners to understand that CIPeed clams do not all get the benefit of their earliest priority claim to avoid prior art, much less a D.C. judge or jury. [These days we have APJs in IPRs that do understand that.]

        1. 8.4.1.1

          But it would still take a lot of expensive work to find the valid priority date of each of all those amended claims and then find prior art dated before those old dates. Given the strict page number limits for IPRs it would seem to me to be almost impossible to file an adequate IPR petition against patents with hundreds of different claims against all but a few of the claims? Furthermore, even if you could prove all the alleged double patenting, that issue cannot be raised in an IPR. Likewise, an IPR technically cannot be used to raise any 112 issues even if the amended claims are not enabled by their claimed priority applications, although that might have other consequences which an IPR expert could discuss.

          1. 8.4.1.1.1

            I should add that in view of the Fed. Cir. “special case” Hyatt decision an IPR against a Hyatt patent with hundreds of claims ought to be able, by petition, especially with the support of the PTO Solicitor, to suspend the normal strict page limit rules for an IPR petition.
            But full and adequate examination of such applications before issuance is vastly preferable.

  2. 7

    14 full time examiners on 20 applications.

    Even presuming no prior work,
    how long will this take?
    How long should this take?
    How much time will actually be charged by (telecommuting?) examiners?

        1. 7.2.1.1

          Can you point to where I or anyone said that they are all the same? I think you have a strawman
          F
          E
          T
          I
          S
          H.

          ;)

          1. 7.2.1.1.1

            Not at all Ben – and it is NOT that I am saying that YOU are saying this (I am not setting up an argument to knock it down).

            It is a plain fact that the Office treats applications as “same sized widgets” in its system.

            Methinks you are overly sensitive and are merely overreacting to the “anon says” cue that you see.

            React less
            Think more

    1. 7.3

      how long will this take?
      How long should this take?

      I agree, I think they should just allow all the claims as they currently stand and let you guys do the work.

      1. 7.3.1

        Not sure just what you think that you are agreeing to, Random.

        I have ALWAYS been against mere rubber-stamping – BOTH Reject Reject Reject and Approve Approve Approve.

        Further, the rubber stamping that you seek is the OPPOSITE of the mantra of mine of YOU doing YOUR Fn job (which is rather the point here, eh?)

    2. 7.5

      It says 20 not counting Hyatt’s applications, which, according to an earlier post, number around 400, so the 14 examiners are actually working on about 420 applications.

      But since you’re curious, those examiners are working on a detail assignment and they don’t have normal production requirements. They just lose a little bit of their soul every day instead ;)

      1. 7.5.1

        Thanks Apotu,

        So we have 420 instead for the 20.

        That’s like 21 each, and with the age of these, that’s like 1.5 apps per year…(rough estimate).

        That’s some special detail.

        ;-)

        1. 7.5.2.1

          Fair enough question, Paul – as I have always thought that the “Oh n0es” litigation scare tactics should be normalized against the population of possible claims that could be brought in litigation (which drops the actual litigation rate to well below half a percent… – the whole flea’s tail wagging the dog syndrome and all)

  3. 6

    On June 6, the District Court ordered Hyatt v. Lee, on remand from Kappos v. Hyatt (Federal Circuit) on remand from Kappos v. Hyatt (Supreme Court) be dismissed for laches. link to ecf.dcd.uscourts.gov

    From the Order:

    In 2012, the Supreme Court held that the district court abused its discretion by
    excluding Mr. Hyatt’s new evidence and remanded the case to the Federal Circuit. Hyatt v. Dudas,
    No. 03-0901, 2005 WL 5569663 (D.D.C. Sept. 30, 2005), aff’d sub nom., Hyatt v. Doll, 576 F.3d
    1246 (Fed. Cir. 2009), rev’d en banc sub nom., Hyatt v. Kappos, 625 F.3d 1320 (Fed. Cir. 2010),
    aff’d and remanded, 132 S. Ct. 1690 (2012).
    For the next three years there was no action in the case. In 2015, plaintiff filed an
    unopposed motion in the Federal Circuit to remand to the district court, noting the “docket sheet
    reflects no activity in this case after May 21, 2012.” Appellant’s Unopposed Mot. Remand Hyatt
    v. Kappos, 625 F.3d 1320 (Fed. Cir. 2010) (No. 2007-1066), ECF No. 3. Shortly after the case
    was remanded to this Court, defendant filed the present motion to dismiss.

    A. FAILURE TO PROSECUTE
    This case was sitting at the Federal Circuit from Mid-2012 to Mid-2015, nearly three years.
    Three years is a long time.

    Court concludes three years of inactivity would be sufficient to dismiss in and of itself.
    See Capital Yacht Club v. Vessel Aviva, 646 F. Supp. 2d 156, 156 (D.D.C. 2009) (dismissing in
    part for failure to prosecute after two years of inactivity);

    The three years do not exist in isolation however. They exist in the context of the patent
    system, and more particularly in light of the fact this patent application was filed just days before
    changes from the Uruguay round of the General Agreement on Tariffs and Trade (“GATT”) went
    into effect. This means if a patent were to issue, its duration would be from the time of issuance,
    not the time of filing.

    Without impugning any motives, the Court must
    recognize that the three years the case sat at the Federal Circuit on remand came at a direct cost to
    those “private and public rights,” as each day it sat is another day the patent, if issued, would be
    withheld from others. This is something the plaintiff was well aware of. The Court notes that
    defendants raised the issue of delay in their 2003 motion for summary judgment. Def.’s Mot.
    Summ. J. 2-6, ECF 23-1 (discussing “submarine patents”). Without opining on the validity of that
    argument, plaintiff was aware not only of how the patent system worked, but the implication of
    each additional period of delay. It is in this context the Court finds the delay to be particularly
    egregious.

    While the Court feels
    that dismissal under Rule 41(b) can and should take into account all the circumstances, including
    inaction in light of this being a pre-GATT patent case, it does not feel it is necessary to reach the
    issue of prosecution laches as a separate and independent basis for dismissal or examine the history
    of this patent in front of the USPTO. As noted previously, this would involve analyzing the
    “totality of the circumstances, including the prosecution history of all of a series of related patents
    and overall delay in issuing claims.” Symbol Techs., Inc. v. Lemelson Med., Educ. & Research
    Found., 422 F.3d at 1386. This includes not only the 30-plus year history of this case, but of
    multiple cases across both decades and jurisdictions. Such a sweeping inquiry is not required in
    this case, as the Court finds there was a failure to prosecute.

    Dismissed.

    Royce C. Lamberth District of Columbia

    1. 6.2

      Thanks Ned, but this is not the Nevada D.C. case.

      What will be the effect of the dismissal of this case for laches?

      1. 6.2.1

        Paul, well the case is not over yet, they are still briefing a motion for reconsideration, but Hyatt’s failure to prosecute (for three years) by itself, when his case is of the pre-Gatt type, was sufficient to find prejudice to the public. That is, I think, going to be a major precedent for every Hyatt or other pre-Gatt case still pending where any unexplained delay by the applicant might be deemed prejudicial enough.

        Recall this case came out of the patent office, went to the District Court, when up to the Federal Circuit and then to the Supreme Court. The issue before the Supreme Court was whether Hyatt could introduce new evidence in a trial de novo. The Supreme Court ruling was that he could.

  4. 5

    Excess claim fees could also be greatly increased for filing very large numbers of claims to pay for the extra examination costs.

    Or a simple rule: you’ve reached the maximum. You’re done.

  5. 4

    “The PTO has 14 full time patent examiners going after these remaining applications that were all filed prior to June 7, 1995.”

    I guess Mr. Hyatt is the first person to ever get what is supposed to come with extra claim fees: more examining resources.

    Kudos to him.

  6. 3

    You can thank former PTO Director Dave Kappos for immediately understanding and responding to complaints by myself and others of the dangers of these inexcusably long delayed and unpublished “submarine” applications. He promptly set up a special PTO project to act on the surprising number they found. I’m very pleased to see this confirmation that the “PTO has 14 full time patent examiners going after these remaining applications. ”
    Note that pre-Gatt applications [if never re-filed] produce surprise patents with a patent term running from their ISSUE date – many more years from their pre-June 1995 filing date.

    As to those old Gilbert Hyatt applications, does anyone have more specific information?

  7. 1

    Just a reminder to the folks who write the rules: Hyatt isn’t the only ridiculous person on the planet capable of holding a grudge and dipping into his giant pile of money for the purpose of tossing of hornet’s nests into the PTO or the patent system generally.

    Maybe now is the time (more like way overdue) to think about putting some reasonable limits on applicant filings and patentee holdings.

    1. 1.1

      …because personally limiting the system is a great example of “promoting”….

      Only Malcolm can try to pass off such oppositeness.

      1. 1.1.1

        Are Gil Hyatt’s applications “promoting progress in the useful arts”?

        That’s a rhetorical question. We all know the answer.

        1. 1.1.1.1

          Your rhetorical question is rather off point and inconsequential to the issue of of the processes involved her, eh Malcolm?

          (you kind of need the actual examination to be done to get your answer anyway, right?)

          1. 1.1.1.1.1

            Your rhetorical question is rather off point

            You have a really bad habit of bringing up subjects (e.g., “promoting” progress — but go ahead and pretend that you were talking about something else) and then mewling when someone follows up on your comment.

            There’s only a couple commenters here as st00 pit as you are. The rest of us can read perfectly well and we can all see what you’re doing, as you do it.

            I don’t expect you to learn a darn thing, of course, but go ahead and surprise everybody.

            1. 1.1.1.1.1.1

              Moire of Malcolm’s (trademark – or at least should be trademarked) AccuseOthersOfThatWhichMalcolmDoes and its sibling AccuseOthersOfThatWhichMalcolmIs….

          2. 1.1.1.1.2

            Gil Hyatt, as everyone knows, made a substantial chunk of his fortune peddling a junk patent and pretending to be the inventor of the microprocessor.

            If you believe that he’s ever promoted progress in anything, then tell everyone what it is.

    2. 1.2

      Long pending applications and amendments with hundreds of added claims by folks like Lemelson and Hyatt exist. It is the responsibility of the PTO to figure out how to deal with them. [NOT by letting examiners avoid working on them.] By docket controls and adequate examiner resource assignments and workload rewards, as is being done for these particular applications.
      Excess claim fees could also be greatly increased for filing very large numbers of claims to pay for the extra examination costs.

      1. 1.2.1

        It is arguably within the PTO’s authority under 35 USC 2(b)+ to limit the number of claims that can be included in each application. The current 20/3 model is a good baseline.

        As the PTO is arguably not required to allow more than 20 claims, or some other number, they’re arguably not required to charge extra claim fees.

        However, the PTO has been charging extra claim fees for decades now without giving the examiners or applicants what was paid for: extra examining resources (e.g. time, money, number of examiners, etc.). The conclusion is undeniable: the PTO is addicted to the free money that extra claim fees provide.

        Amend Rule 75 to provide a maximum number of claims per application. And get rid of the extra claim fees.

        1. 1.2.1.1

          Among those who would strongly object to a maximum number of claims per application [unless that was a really large number] would be some of the many applicants who regularly file applications with no prior prior art search. Thus having no clue as to what their claims need to actually look like. Thus needing to submit amendments with all new sets of claims.

          1. 1.2.1.1.1

            I’m sure there would be objection. But that’s not an excuse for not correcting the problem. The PTO has to either limit the number of claims that may be presented with the payment of the filing fee, OR they need to actually give examiners and applicants what is paid for when extra claim fees are charged and collected, i.e. more examining resources.

            It’s unacceptable to continue to charge for services not provided.

            I see on another patent law blog that Ms. Lee testified before Congress on the “huge scandal” that is supposedly caused by “unaccounted” examiner time. That’s nothing compared to the extra claim fees collected over the past 20-30 years that have never been used to give examiners and applicants what was paid for. Where’s the outrage over that?

            1. 1.2.1.1.1.2

              “It’s unacceptable to continue to charge for services not provided.” Amen, bro. Ever receive a decision on a petition for color drawings in a provisional application? Me neither, even though we’ve paid for such a decision.

              A corollary is, you shouldn’t have to pay extra for the PTO to do its job, but that’s what happens with petitions: your petition sits there for months and months, even if the allowability of the petition is self-evident; but if you pony up and pay an additional fee, they’ll examine the petition right away.

          2. 1.2.1.1.2

            Be that as it may, Paul, that is fully allowed under the current laws (and is also fully under the control of the client).

            I note that you did not come back to share any of your thoughts on “rewarding” applicants who actually do perform good pre-writing searches (but also note that THAT thread is a little long in the tooth now).

            See: link to patentlyo.com

          3. 1.2.1.1.3

            What’s the benefit to keeping all those claims together, rather than just filing a continuing application? Sincerely curious.

            1. 1.2.1.1.3.1

              Ben, read the transition provisions of the statutory amendments to implement GATT/TRIPS (or just read Dennis’ post): if you file a con now, that con is entitled to 20 years from the earliest filing date. Since we’re now more than 20 years since the GATT amendments came into force, your continuation of a pre-GATT app is stillborn. Though the PTO will gladly take your money for such a filing.

              1. 1.2.1.1.3.1.1

                1.2.1.1 was discussing applications going forward rather than only pre-GATT applications as you appear to think.

            2. 1.2.1.1.3.2

              First benefit: Patent term adjustment
              Patent term adjustment only accumulates while an application is pending and only accumulates for individual applications. So a divisional or continuation application starts a new PTA counter.

              To further explain:
              Case 1: I file application A with 100 claims; prosecution takes 5 years; patent issues with 500 days of PTA. Great.

              Case 2: I file application A with 100 claims; restriction requirement is issued, I elect first 50 claims; prosecution takes 5 years; patent issues for first 50 claims with 500 days PTA; I file divisional to second set of 50 claims – this set of claims only starts accumulating PTA from the moment I file it.

              Case 2.A: I file the divisional at the end of prosecution for the first 50 claims – I have lost all the PTA I could have gotten.

              Case 2.B: I file the divisional immediately after I elect the first 50 – I still loose whatever PTA I had accrued prior to the restriction requirement, but diminish my potential lost PTA with respect to Case 2A.

              In either case, the divisional application will have a shorter enforceable lifespan than the sibling application (same priority date, later issuance, more likely to have less PTA).

              Same thing with continuations. Just in that case, the Applicant has more control; whereas, with restrictions/divisionals the Applicant has very little control.

              Generally, clients don’t care about these PTA differentials but for certain bio/pharma it is important.

              Second Benefit: a wide array of different features can be claimed

              I doubt many of them will help argue 102/103 patentability. But, having the option is nice.

        2. 1.2.1.2

          Didn’t the Tafas case have some impact on that “limit of claims” thought that you have AAA JJ…?

          Not sure you can limit, while you certainly can charge (and this does not include any finding of prolixity – by “not limit” I presume that you cannot limit non-prolix claims.

          1. 1.2.1.2.1

            I don’t think Tafas had any impact on the ability of the Office to limit the number of claims in an application. That was not an issue in Tafas.

            1. 1.2.1.2.1.1

              You might becorrect – bt certainly there is a parallel about limiting claims and limiting other modes of the applicant to capture their invention.

              I do not see the basis of authority for the Office to outright limit claims, as that smacks of the same substantive nature that defeated the Office attempts in the Tafas case.

                1. And I replied: that basis – just as in Tafas – does not work for such substantive matters.

                  You are off your game, AAA JJ.

                2. The number of claims that may be included in an application is not a substantive matter. You’re just tilting at windmills with that.

                  If you think there is some cite from Tafas that holds otherwise, please share.

                3. Actually the number of claims very much is a substantive matter – especially when you consider that I have already removed the prolix concept.

                  I am not the one “tilting at windmills” here.

                  And as for Tafas – I am merely drawing the parallel, since I am taking you at your word that Tafas was not directly on point. Surely you recognize how a parallel (substantive matter) would apply given the Tafas case….

                4. The only rule that was found to be substantive was proposed Rule 78 that required a petition to make a priority claim after the second continuation. This was found to conflict with 35 USC 120 as that section only requires copendency and for the applicant to make the claim to be entitled to priority. That was determined to be beyond the PTO’a rule making authority.

                  ALL of the other proposed rules (e.g. an ESD for all claims in excess of 25/5) were found to be procedural and within the PTO’s rule making authority.

                  You might wanna re-read the case cuz you been running around on this site shouting “Tafas!!! Tafas!!!! Tafas!!!” for years and it’s clear you don’t what you talkin’ ’bout.

                5. The only rule that was found to be substantive was proposed Rule 78 that required a petition to make a priority claim after the second continuation. This was found to conflict with 35 USC 120 as that section only requires copendency and for the applicant to make the claim to be entitled to priority. That was determined to be beyond the PTO’a rule making authority.

                  ALL of the other proposed rules (e.g. an ESD for all claims in excess of 25/5) were found to be procedural and within the PTO’s rule making authority.

                  You might wanna re-read the case cuz you been running around on this site shouting “Tafas! Tafas! Tafas!” for years and it’s clear you don’t know what you talkin’ ’bout.

                  Reposted to not hurt the delicate fee fees of D’s filter.

                6. I don’t need to “re-read the case” because the item we are talking about IS substantive.

                  You are still tilting at windmills.

                7. “I don’t need to ‘re-read the case’ because the item we are talking about IS substantive.”

                  And your support for that conclusion is…what?

                8. Having removed the prolix concern, you are directly talking about the substance of the invention (number of claims, each being different).

                  That you have to ask and cannot see this only tells me that you have “invested” too heavily on your first comment and find that correcting yourself is “beneath you.”

                  Keep tilting.

                9. I do – but I was hoping that simple reason would suffice.

                  Clearly, you are tilting too much to see the simple reasoning.

                  Let me know when you want to stop tilting.

                10. Talk about your baseless ad hominem….

                  Maybe you want to try again with your view that somehow the claims themselves are not substantive.

                  You seem to want to merely assume otherwise and not bat an eye (now talk about someone appearing to be an examiner…)

                11. “I don’t need to “re-read the case” because the item we are talking about IS substantive.”

                  In this thread anon doesn’t understand the difference between formal/procedural (at which point in time and in what manner the PTO will agree to review xyz claims) and substantive (whether or not the PTO will agree to review xyz claims).

                  It’s super hard for anon to understand.

                12. 6,

                  You are as wrong about that now as you were during the Tafas discussions.

                  How did that turn out for you, btw?

                13. Reposting once again thanks to the professor’s nanny filter.

                  I never expressed any “view that somehow the claims themselves are not substantive.” (Whatever that’s supposed to mean.)

                  Having fun beating your strawman, examiner anon?

                  What I said was, and this is verbatim, “It is arguably within the PTO’s authority under 35 USC 2(b)+ to limit the number of claims that can be included in each application.”

                  And it is. As J. Prost wrote in Tafas, “we need not decide whether the USPTO may impose a limit on the number of claims an applicant can pursue.” 559 F.3d at 1363. It’s clear that the issue of whether the PTO can place a limit on the number of claims an applicant may have in an application has not been decided by the court. So it’s true that “It is arguably within the PTO’s authority under 35 USC 2(b)+ to limit the number of claims that can be included in each application.”

                  Which is exactly what I said.

                  You are ponderous. Just ponderous.

                14. Don’t be pedantic AAA JJ.

                  Of course you said that – what else can one make when you want to limit claims? I explained as much in my reply.

                  For you now to pretend otherwise is simply disingenuous. For you to double down and claim that I am strawmanning when I am clearly not, only means that you have no real answer (yep – still tilting at that windmill).

                  You cannot limit the claims and not affect the substance of what the claims are for.

                  Prost’s comment is simply immaterial (besides being dicta and being wrong) – and you are the one being ponderous.

                  Unless you think that claims are not substantive – (and that somehow limiting them won’t affect a substantive right).

                  Maybe instead of posturing and protesting so noisily, you explain how the substantive aspect of claims is not affected in a substantive way if you limit the claims (and please remember, prolixity is off the table, and that means that the number of claims are validly to different aspects of the invention – no matter HOW numerous).

                  The floor is yours – do something meaningful with it.

                15. Clearly not, AAA JJ,

                  Since as I have already replied to what you wrote, and found it lacking, you need to write better.

                  (and that is hardly “ponderous,” now is it – unless you are taking after Malcolm with the name calling for you yourself are doing…)

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