U.S. Patent No. 10,285,922 (110 days from earliest priority to issuance). The ‘922 Patent claims a “topical exfoliating formulation” that includes papain enzyme. Case was subject to a petition to make special based upon the inventor’s age of 65+. Applicant cited no references and the (primary) examiner only found two.
U.S. Patent No. 10,343,988 (111 days from earliest priority to issuance). The ‘988 patent is directed to a new compound known as hydroxytyrosol thiodipropionic acid apparently useful for food preservation.
The patent claims priority to a Chinese application filed March 1, 2019. The U.S. application was then filed March 20, 2019 and issued on June 19, 2019. Applicant cited no references and the (primary) examiner only found one.
U.S. Patent No. 10,336,689 (114 days from earliest priority to issuance). The ‘689 patent has a similar path to the ‘988 patent (and is owned by the same entity (Shaanxi University of S&T) and examined by the same primary examiner — but is directed to a totally different compound that exhibits “antitumor activities.”
U.S. Patent No. 10,302,471 (116 days from earliest priority to issuance). The ‘471 also stems from China, but does not rely on foreign priority. The patent claims a device for observing “abyssal flow” and was subject to a “track one” petition.
Does it make sense to allow applications to be fast tracked because of the age of the inventor when the applicant is a legal entity?
Interesting question.
Is this one in which the original applicant was the individual, and then later the application was transferred to a juristic entity?
MPEP 708.02(a)VIII(E) might be of interest:
E. Withdrawal From Accelerated Examination
There is no provision for “withdrawal” from special status under the accelerated examination program. However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. An applicant may abandon the application that has been granted special status under the accelerated examination program in favor of a continuing application, and the continuing application will not be given special status under the accelerated examination program unless the continuing application is filed with a petition to make special under the accelerated examination program. The filing of an RCE under 37 CFR 1.114, however, will not result in an application being withdrawn from special status under the accelerated examination program.
Accelerated examination is not the same as a petition to make special based on age.
It might, if the inventor is expected to assist with prosecution, providing valuable insights of a technical nature regarding cited prior art or reasons for nonobviousness. Others at the legal entity, who are not the inventor, may not be able to offer help in this way or may have other priorities. To use just one of the examples above, how many at Shaanxi University other than the inventor would be in a position, if called upon, to assist in the prosecution regarding the alleged antitumor activities of the claimed substance? Perhaps there would be one or two others, but perhaps not.
Is it just coincidence that 3 of the 4 patents listed originated in China? Are the Chinese being fast-tracked for some reason?
Great citation in the ‘988 case to that irrelevant GB patent.
Much better than citing to,l any of the references which teach an antioxidant compound having two hydroxytyrosol groups, bound together in a similar way (diester), but through a different linking group (e.g. CN 107382728 A).
Also, much better than citing to one of the myriad references which teach antioxidants with the claimed thiodipropionic acid ester linking group, but different phenol antioxidants at the end (e.g. US 4694102 A).
Excellent comment, Station. We wait wih interest to see whether the Chinese Applicant has filed at the EPO and, if so, what sort of observations the EPO search examiner will make in the “Extended European Search Report and Opinion on Patentability”.
How long must we wait? Till the A publication emerges, 18 months after the earliest declared priority date. Perhaps the EPO will enlighten Applicant, who failed to cite any patents but whose patent specification makes a praiseworthy attempt to place the claimed subject matter in the context of the relevant prior art background. That it fails to mention any relevant patent publication might just be a reflection of reality, don’t you think?
Or perhaps the EPO search will draw just as big a blank as at the USPTO.
In the run of the mill, patent applications are published 18 months after their earliest Patent Office filing date. So if patent is to issue to the inventor who was “first to file” on that subject matter, the Patent Office should hold back issue until after it has checked patentability against the publications of all patent applications that were filed earlier.
The EPO does this because it very often happens that rival inventors independently file on overlapping or even identical subject matter on closely adjacent dates. With the higher “presumption of validity” of the USA’s “strong” patent system, why not the USPTO too?
Excellent question – and one that I have introduced into several discussions (vis a vis “secret prior art” that the Office affirmatively knows about because it has that art). In addition to that which will publish as an outcome of natural timing, the issue is also present for that which may not publish, that is for both provisional applications and non-provisionals filed under the “Do Not Publish” option.
I will add that once upon a time the Office DID use this “secret” prior art and one would receive a “pending” rejection and a hold placed on examination.
vis a vis “secret prior art” that the Office affirmatively knows about because it has that art
The office may be in possession of it, but an examiner has no mechanism to search unpublished prior art, which effectively makes it nonexistent. Any application (including provisionals) can be seen if one inputs the application number, but there is no searchable database of unpublished applications, so one would have to know of the subject matter and the application number that links it without a search. The only plausibly common manner in which an examiner would know of relevant unpublished prior art would be if the particular examiner happens to have an unpublished case in their docket that covers the same subject matter.
Items are categorized, even if not published (please note that I included in my comment more than just provisional applications, which as provisionals are certainly not examined).
Random, you must be a newer examiner, as what you posit as “not possible” WAS actually routinely done at the Office back in the day.
It was only an Office decision to STOP making rejections against unpublished art KNOWN to the Office that steamrolled the effects of this “secret” prior art.
Without any snark, your comment shows that you do not comprehend the situation.
Random, you must be a newer examiner, as what you posit as “not possible” WAS actually routinely done at the Office back in the day.
It was only an Office decision to STOP making rejections against unpublished art KNOWN to the Office that steamrolled the effects of this “secret” prior art.
Yes, there was a database that is no longer in existence. So it is indeed not possible now. You seem to be of the opinion that the office chose to spend money to maintain a database it knew it would no longer be using. It’s self-evident why they did not.
Items are categorized, even if not published (please note that I included in my comment more than just provisional applications, which as provisionals are certainly not examined).
But cannot be searched. East searches the publications. We have a separate docketing system which allows us to pull up all the documents associated with an application number (similar to public pair, but for all documents that have been assigned an application umber). You can keyword search East and won’t get unpublished returns, and you can pull up unpublished applications without a keyword search, but you cannot keyword search unpublished applications. Without a keyword search, no real search has taken place.
Max’s point remains valid – Unless you wait until the publication time associated with the day before the filing date, a patent hasn’t had all of the possible prior art searched against it.
[T]here was a database that is no longer in existence. So it is indeed not possible now. You seem to be of the opinion that the office chose to spend money to maintain a database it knew it would no longer be using. It’s self-evident why they did not.
Huh, what? Why did the PTO know that it would no longer use such a database? Please forgive my ignorance here, but I have never heard of such a thing. What is the story here?
Choosing not to do something is a far cry from “not possible” (even — or perhaps especially — that technical “not possible” is a matter of mere choice).
You just don’t get the benefit of “can’t” if that very can’t is the direct result of the choice NOT to.
The only thing self-evident here is that this “wound” is self-inflicted (think culpable negligence). The fact of the matter remains that the very thing being claimed “not possible” is not only possible, but was actually done.
(You do realize that you are making my case for me, eh?)
“Choosing not to do something is a far cry from “not possible” (even — or perhaps especially — that technical “not possible” is a matter of mere choice).”
Is it your intention to conflate what the PTO is capable of with what an Examiner is capable of?
Silly Ben – I am conflating nothing.
Check what your fellow examiner admitted to: the Office HAD a database with which to use, and the Office decided to stop using it.
I find this:
“…one would receive a “pending” rejection and a hold placed on examination.”
implausible, especially in the land of “due process”. You mean to say, one is subject to a “hold” order but is denied any knowledge of the reason for the “hold”.
Your finding of “implausible” is nigh meaningless. These things happened, and you were informed that a potential rejection was in order over the possibility of the reference surviving to become a “true” reference (that is, the other party COULD decide to make their reference “not exist” as prior art with their own power of choice to abandon their application prior to any instance of publication).
These provisional rejections only get made (and historically only ever have been made) where the art over which app X is being rejected is owned by the same entity or individual as app X. In other words, no due process problem. The one being rejected knows the nature of the art over which the rejection is being made, because the person receiving the rejection also has confidential access to the art over which the rejection is being made.
While the situation you describe is one of the ways, your comment as to this being the only way is simply wrong.
MPEP 2136.II
Thank you Greg. In the MPEP extract, I note in particular the no-brainer “must remain confidential” caveat.
As to Little David who applies for a patent at the USPTO and exercises his “Do Not Publish at 18 months” option, he should not complain if one or other Goliath who filed later waltzes straight through to issue, only because his path to issue was free from any David-shaped prior art.
A-publication at 18 months is what breathes life into the patent system, so that it functions properly, to stimulate further innovation, and accelerate design around activity. It will likely also be David’s interests too.
You quite miss the point, MaxDrei (also, it is not just “little David” that exercises that “Do Not Publish” mechanism, as the mechanism is valuable to big and small alike — just not big who immediately pursue world wide (or merely selected multi-Sovereign) prosecution.
Your crabbed view of the “glory” of publication makes one wonder why wait 18 months. Why wait at all?
Why wait? Indeed. Nothing to stop Inventors publishing the day after they invent. Some say that the AIA is a “First to Publish” law anyway. The glory of 18 month A publication is that you have 18 months to acquire investors on a first refusal confidential basis, re-write your patent application, and then, on publication an 18 month backdated prior art effect to blow away all the other rival filers.
“Some say that the AIA is a “First to Publish” law anyway.”
Only the f00lish say that.
…thinking about your answer to my question of why wait at all, you appear to grasp some recognition of the value of proceeding on a confidential basis, but then err with your “and blow away” comment — from multiple aspects.
As THIS thread points out, the “fastest” items bypass any such effect.
18 months is a rather arbitrary time selection, and nothing precludes an examination (and therefor by extension, any examination) from concluding prior to that 18 month window. It is merely by happenstance that the volume of backlog makes it so that prosecution does not conclude typically within the 18 month window.
So that is an aspect from outside of the patentee’s control.
Another aspect that I have alluded to is the original US Sovereign view of the Quid Pro Quo itself. I have spoken previously about the critical difference in viewing the exchange between the putative inventor and the government as the processor of turning an inchoate personal property into a full legal property. That exchange was NOT a publication of the submission for a mere chance at a patent right. That exchange was for a granted patent for the publication. This is a foundational point that must be understood, recognized, and incorporated into the discussion. Even these “quickest” items STILL remain in the control of the patentee as to accepting a realized grant for publication, as the patentee retains the power of express abandonment after notice of allowance — which, if exercised, would remove the presence of the application as if it never were (and preserve the option of Trade Secret, at the discretion of the holder of the inchoate right).
This is an aspect of the deal within the control of the patentee.
I have also spoken about the pragmatic effect of the US Sovereign in choosing to deal with Foreign Sovereigns that do not share the same foundational Quid Pro Quo. These are reflected in the conditions under which the opt-in (and in truth, this opt-in SHOULD be the default) for the Non-Publication route must be revisited and rescinded. The pragmatic effect is that by choice the holder of the inchoate right is engaging in other Sovereign’s and the deals of those other Sovereign’s and choosing to publish. Under those conditions, there is a sense that such an applicant’s choice should be reflected as well in this Sovereign, thereby curtailing the “confidential” protection here.
Many though (and perhaps reflecting your exuberance on ‘publishing’) mistakenly portray this surrender as some type of benefit to the applicant.
This of course is a ridiculous view, as this is a surrender of the Quo with NO obtaining of the Quid (reducing the more valuable foundational deal of the US system for the lower value deal of ROW).
Yet another aspect of this ‘evolution’ played out historically here in the states, as when the switch was made, we saw a patent office become lazy and entrenched in a Reject Reject Reject mode. After all, for all those not opting in to the Non-Publication route, the government realized their Quo with NO further effort. Why bother then with the difficult task (in anything other than a perfunctory manner), when one has already obtained their end of the bargain? Sure, this leaves a sour taste, but the evidence of Reject Reject Reject is undeniable (as is one of the outcomes: the bloat of backlog in any number of Office processing queues, such as first action in the merits, RCEs, and appeals). The Office lost its impetus to be timely because it had already obtained its Quo.
An error on the “blow away” aspect is that any prior art effect is only a block against your competitor patenting something that would be blocked by the publication.
This is a shallow “protection,” and merely plays the game that the established Big Corps would prefer to play anyway: compete on other than innovation-protection grounds. Remember, the publication pre-grant is just not the same “deal” as was the foundational Quid Pro Quo and the “mighty” blow away that you would want to bank on as protection is actually an invitation for the Big Corp to play the Efficient Infringer game (no Quid and the Quo is there for the world to take).
Given the hurdles that any patent holder would need to jump over to enforce any eventual grant, the effective loss of the remedy that most resembles any (potential) grant (vis a vis eBay), what Efficient Infringer would not LOVE the denigrated “deal?”
18 months is a rather arbitrary time selection, and nothing precludes an examination (and therefor by extension, any examination) from concluding prior to that 18 month window. It is merely by happenstance that the volume of backlog makes it so that prosecution does not conclude typically within the 18 month window.
I too think the 18 month standard is arbitrary. Publishing should occur on filing – when the application gets a number, it should be set to be published asap.
That exchange was NOT a publication of the submission for a mere chance at a patent right. That exchange was for a granted patent for the publication.
It’s been a publication for a mere chance for a long time, so yes that is the quid pro quo. It may not have been the original deal, but it’s certainly the most common deal being selected right now and if it were the only deal offered (i.e. they removed the “do not publish” option) that would be okay too. The deal used to be 17 years from grant, and now its 20 from filing, and there’s no option to take 17 years. Offered deals change.
we saw a patent office become lazy and entrenched in a Reject Reject Reject mode.
By definition, the party with the burden of moving forward exercising the burden isn’t lazy. Allow allow allow is lazy. Reject reject reject is difficult.
[T]he 18 month standard is arbitrary. Publishing should occur on filing – when the application gets a number, it should be set to be published asap.
An interesting idea. Off the top of my head, I cannot think of a single instance in the last year (i.e., since I started working as an in-house counsel) where my advice about file/do-not-file would have been different if publication normally occurred instantly upon filing instead of 18 months later. In other words, I do not see an obvious downside to such a rule. On the other hand, the fact that literally no patent system runs on such a rule (at least none of which I am aware), makes me suspect that there must be some good, practical reason why this rule would produce suboptimal consequences.
I have already explained why there should be a pause between filing and A publication. see earlier today.
18 months is not “arbitrary”. It takes account of the Paris Convention 12 month priority period and the time it takes, after that, for a Patent Office to do a solid patentability search and include the results in the A publication.
Whereupon, readers of the A publication can assess what subject matter might go through to issue.
Whereupon, all those 18 month A publications will provide the basis of a well-informed solidly-based, commercially useful FTO opinion.
More questions, anybody else new to A publications in a FtF environment?
Incidentally, the UK Patent Office, like the USPTO, is willing to grant without waiting for a search of all those 18 month A publications. But such early grants are requested, I suspect, about as often as hens grow teeth. Currently, there seems to be much willy-waving amongst Chiefs of Patent Offices round the world, each trying to out-do the others, in speed to grant. Sad!
..similar to the comment of mine below that is currently held in the “count filter.”
18 months is not “arbitrary”. It takes account of the Paris Convention 12 month priority period and the time it takes, after that, for a Patent Office to do a solid patentability search and include the results in the A publication.
O.k., but that does not really answer the question “why 18 months?”, it just moves the question off a degree. So if the answer to “why 18 months?” is “that is the amount of time necessary to prepare a search report after the Parish convention date,” then the follow-up question is “why should the patent system care about the ability to prepare a search report after the Parish convention date?”.
Is there a good reason—that is, a reason that speaks to the fundamental well functioning of the patent system—why we should want to allot time for a search report and Paris convention interval before publishing the application as filed? The fact that every country (or at least all of which I am aware) does it this way suggests to me that there must be a good reason. At the risk of once again exposing my ignorance, however, I confess that it is not clear to me what that good reason is.
Greg seems unable to recognize the existence of “secret prior art.”
At all.
He probably also does not recognize that an applicant has the power (even still – as with the Non-publication request route) to REMOVE his item from being considered to BE prior art (or not) up to the decision to pay the issue fee after a notice of allowance. Up to that point, the option (entirely within the control of the applicant) for express abandonment exists.
One has to wonder as well what Greg thinks the Quid Pro Quo is all about…
(or why the traditional US version is the Gold Standard)
I am asked why anybody should care whether or not the A publication includes a patentability search report. I thought i already answered that. FTO opinions are routinely given on the basis of a search report that is rich in WO publications. When these WO publications include an EPO search report, the writer of the FTO opinion has available sufficient material to form a well-founded view what scope of protection the owner of the WO publication might be able to carry through to issue.
Absent that EPO search report, it is anybody’s guess what claims might go to grant on the back of that threatening WO publication.
Hence….18 months.
Thanks, Max. That is helpful. Makes sense to me.
“Absent that EPO search report, it is anybody’s guess what claims might go to grant on the back of that threatening WO publication.”
More than just a little hyperbole there.
We have clients that routinely obtain third party search reports as part of the ideation vetting process, and these are pretty much exactly like the EPO search report (sometimes better, sometimes not, but definitely on par).
You have misconstrued the meaning of Reject Reject Reject.
Such is not “indignation” at a mere rejection, and as I have often stated in the past, the put-down simply is NOT equivalent to a call for Allow Allow Allow.
No. The indignation from the Reject Reject Reject era is from the LAZY non-in depth and accurate examination based on the desired result of “no patent for you.”
In other words, you presume TOO MUCH when you presume that exercising the burden was a part of the Reject Reject Reject syndrome (and FAR too often, actual meaningful examination was expressly absent from the items being put to the Reject Reject Reject mantra.
You also err in the “only choice” views of publication, but that error is more nuanced (hint: reflect on the items that force one to drop out of the Non-Publication Route choice). Our Congress decision to go to the “Publication” route with “opt-in for Non-Publication” was sold under false impressions (and reflects the same “choices” behind the inane America Invents Act).
So while yes, offered deals DO change, you are FAR too single track minded in an anti-patent manner to recognize the facts and views that I present and come to a proper understanding that we have denigrated the patent Quid Pro Quo deal – just because change COULD happen (and has happened), does NOT mean that such change is good (or should be allowed to stay as ‘the deal’).
“from the LAZY non-in depth and accurate examination ”
should read:
“from the LAZY non-in depth and inaccurate examination“
So what is so magical about 18? why not 6 months? Why not 36 months? Why not 1020 months?
Near as I can tell, the 18 month date was chosen based on a (loosely-supported?) notion that by then a significant number of applications will have had a first pass substantive examination on the merits and that an applicant could make an informed decision whether to abandon prior to publication or take their chances.
See the congressional record for discussions on Patent Term Adjustment.
Comment on timing caught in the “count filter,” hoping to see it released.
If you want the earliest possible defensive protection art for a new products, or protection against a supplier for parts for it, you do NOT wait for the 18 months publication, you publish in an obscure foreign publication or file in a country that immediately lays open applications after getting the security clearance from the PTO.
Good points, Paul (for those wanting that option).
Even better, publish on my obscure island nation in my obscure island nation’s native language –
).
Back in the 1970’s, the sophisticated choice for Big Pharma was the Belgian Patent Office, laying open the patent application just after filing, in Flemish. Another possibility, today, might be the UK Patent Office, in Welsh. Today, thanks to Google, publication in an obscure language is not as impenetratable as it used to be.
… which is of course a feature of my personal obscure island nation with its obscure native language (we are Google-proof).
“It will likely also be David’s interests too”
Why? Because publishing tips off your competitors and without the actual protection of a grant, Big Corp can then compete on other non-innovation factors?
You show a definite LACK of grasp of the original US Sovereign Quid Pro Quo that had made the US Patent System the world leader in innovation promotion: Grant for Publication (as opposed to mere chance of grant for publication).
Lack of grasp? First PTO publication only upon grant (and not before) was the way it was done in the UK, half a century ago, when I was preparing to pass the patent attorney qualification process. Only harmonisation with PCT/EPC displaced the UK quid pro quo. I can assure you, this harmonisation during my career years, including standardisation on the 18 month A publication model, has accelerated innovation in the UK.
You are doing that “hey, my glasses work great for me, they should work for you too” thing again.
You under-estimate (or simply misunderstand) how the US Sovereign (and the inventors here) have things set up.
So, yes, “lack of grasp.”
I can assure you,… the 18 month A publication model, has accelerated innovation in the UK.
I cannot imagine how one could offer such an assurance in good faith. How could one possibly know? There are so many factors that affect innovation, how can one possibly assess the impact of this one policy change on the observed outcome?
Now that 18 month A publication is the norm, FTO opinions focus on them. Design around activity starts as soon as the emerging threat posed by these pending patent applications is appreciated. The re-jigged designs are then re-assessed for clearance.
What else but “acceleration” is that then, Greg?
FTO is NOT innovation in and of itself, MaxDrei.
Greg’s point here is a valid one.
(although I do see what you are aiming at: that knowledge and clarity of risk against the known potential may assist in making decisions that MAY be associated with innovation activities)
Accelerated innovation is an empirical assertion, but you have offered merely a theoretical answer to my question. What is the empirical evidence that innovation has actually accelerated (not merely that it could accelerate)? Not to put too fine a point on it, but the mere fact that you produce an FTO clearance does not actually mean that the business leads pull the trigger on the research project, let alone that the research project bears tangible fruit. There can be many a slip twixt the cup and the lip.
Moreover, even if there is empirical evidence to hand of accelerated innovation, how certain are we that this observed acceleration is to be put down to the change in publication policy? How do we know that the acceleration is not more properly attributable to (e.g.) enhanced R&D subsidies from the EU, or some change in tax policy, etc?
Indeed, Greg. How do we know. Proof beyond reasonable doubt is hard to achieve, sure. Sometimes we just have to take decision without full knowledge of the facts.
All I said was “I can assure you………”. Just as you are free to ascribe zero weight to any assurance you might receive from an expert on fine art, climate change, economics, the practice of medicine or criminal law, so you are free to ascribe zero weight to any assurance from me and do your own assessment of the balance of probabilities.
“might receive from an expert”
Assumes facts not present (as MaxDrei presumed to equate himself with an expert in other areas…)
Seems a lot like “I know it when I see it”
Further, MaxDrei, you have drifted into the weeds as to attempting to “be” an expert in FTO, and miss the bigger picture that Greg presents (that mirrors my point) that FTO — in and of itself — is just not a cause of innovation. Greg took issue with your full statement, and not to any possible value that may arise from the exercise (and proficiency thereof) of FTO analysis.
Here, even if only for argument’s sake, we suppose that you ARE an expert, such STILL does not equate to more innovation in any causal manner.
To be clear, I am not talking about the amount of innovation. Rather, the pace of innovation. Seems to me a bit unlikely that handing out EU grants could have such startling consequences.
Perhaps there is a bit of “chicken and egg” or “cause and effect” going on here. I mean, which came first: the acceleration of innovation or the demand for publication at 18 months of the application as filed supplemented by the results of a high quality patentability search? Or are both manifestations of the same phenomenon, namely, increased competition, leading to an acceleration of design around activity.
What I do know is that, at least in fast-moving fields like medical devices, the idea of doing an FTO on the basis of issued patents is no longer enough. What is demanded these days is assessment of the level of threat posed by emerging WO publications, 18 months after their priority date.
The design around cycle gets quicker and quicker, stimulated by ever stronger focus on all those WO publications. Do you doubt it?
Or is it different in America?
MaxDrei,
You asserting either amount or pace runs into the same lack of empirical evidence problem and the simple fact that FTO opinions are just not tied to be a driver of innovation.
Hey, I do get the angle that you want to present, and personally, I do see some compelling notion that published information IS valuable (to all of those who may decide to innovate, who may decide to copy, or who may decide to stick with their existing items — whether innovative or not).
This then is NOT a “chicken and egg” thing, as such (again) presupposes some type of causal link, but just wonders which direction (and possibly both) the causal factors are operating. Greg’s point is that you are assuming the very conclusion that you assert, and he believes that actual innovation is distinct from any FTO mechanism.
… and the record for the longest time to grant is…
Re: “… and the record for the longest time to grant is…”
Other than cases under secrecy orders, probably more than a dozen of Lemelson’s patents [via multiple serial continuations continuations and lack of proper PTO docket control], a major reason why patent term was changed to 20 years from original filing plus PTO delays,
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