Patent Term Adjustment: What Happens When Examiner Withdraws Case from Appeal?

Chudik v. Hirshfeld (Fed. Cir. 2021)

Chudik filed his patent application back in 2006. After receiving a final rejection back in 2010, Chudik filed a request for continued examination (RCE).  At that point the examiner withdrew the prior rejection, but then rejected the claims on an alternative ground.  Chukik appealed to the PTAB, but the Board did not get a chance to hear the case. Rather, the examiner again withdrew their rejection and re-opened prosecution with a new alternative ground for rejection.  That appeal-withdraw-new-ground process happened again.  Then it happened again.

Now we’re up to 2017.  Chudik had filed four appeals in the same case but the PTAB with the examiner backing-down each time.  Finally, on the fourth go-round, the examiner issued a notice of allowance after withdrawing the rejection. His patent: US 9,968,459.  Good job Chudik. The patent covers a medical device used in shoulder surgery.  This is the type of invention that – if its use becomes widespread – will use-up the whole 20-year patent term.

Patent term — You know that a patentee gets a term of 20-years from the application priority filing date (not counting provisional and foreign priority). BUT, Congress allowed for patent term adjustment in situations involving delays in prosecution.  The statute, 35 U.S.C. § 154(b), is a bit complicated and poorly written.  In general, a patentee gets extra time whenever it takes the USPTO more than three-years to issue the patent. (B-delay).  However, under the statute, the 3-year delay counter is cut-short by an RCE filing.  Thus, Chudik’s RCE filing cuts-off that form of adjustment.  The statute also provides for A-delay bonuses associated with specific deadlines. This includes issuing a first OA within 14 months and responding to most responsive-filings by the applicant within 4 months.  Overall, out of the 11 1/2 years (4246 days) in prosecution, the PTO awarded 5 1/2 years (2066 days) of PTA to the end of the patent term based upon A- and B-delays.

This appeal focuses on what is known as C-delay. 35 U.S.C. § 154(b)(1)(C). This is time added to the patent term due to appellate review by the PTAB (inter alia).  C-delay has an important caveat — it only applies in cases where “the patent was issued under a decision in the review reversing an adverse determination of patentability.” Id.  Here, although Chudik appealed to the Board four times, the examiner withdrew the rejection each time.  The PTO issued regulations regarding the statute that particularly state that an applicant “is not entitled to [C-delay] patent term adjustment for the reopening of prosecution” by the examiner.

Now, the A-Delay already accounts for some of the delay because the examiner has a bit of a deadline to withdraw the rejection.  However, Chudik found that repeated appeals cost him about 2 years (655 days) of additional patent term not accounted-for by the A-Delay provision.

On appeal, Chudik argued that (1) the appellate process should be deemed to begin when he files the notice-of-appeal; and (2) an examiner’s decision to withdraw a rejection should be interpreted under the statute as the Board “reversing an adverse determination of patentability” because it has the same impact. Chudik filed a civil action on the issue and lost.

On appeal here, the Federal Circuit did not determine the particular standard-of-review to apply to the agency action — finding that it didn’t matter because the PTO’s interpretation was also the best interpretation.

In particular, the court held that Chudik’s proposed interpretation “is, if not linguistically impossible, strained.” The provision:

[PTA provided for] (iii) appellate review by the Patent Trial and Appeal Board or by a Federal court in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability.

You decide – does this provision allow for an examiner’s withdraw of a rejection?  The court explained that a “review reversing” something requires action by the appellate tribunal (here, the PTAB).  Without a PTAB decision, the C-Delay had no effect.

In conclusion, the appellate panel offered a warning to applicants regarding RCEs:

The [loss of] nearly two years (655 days) of delay in the PTO illustrates what applicants should understand when deciding whether to request a continued examination rather than take an immediate appeal. The potential benefit of immediate re-engagement with the examiner through such continued examination comes with a potential cost.

Affirmed.

In the end, Chudik’s patent, originally filed back in 2006 is set to expire in 2032.

119 thoughts on “Patent Term Adjustment: What Happens When Examiner Withdraws Case from Appeal?

  1. 14

    The issue with reopening is simple. It costs our clients a lot of time and money to file appeals. You shouldn’t force our hand like this. You should accept the fact that you are wrong and not make us write an appeal brief.

    Maybe a financial penalty would help. Something like -1000 chits for bonus purposes if you re-open prosecution after an appeal brief has been filed and don’t allow the claims.

    What I see is lazy examiners and arrogant examiners that won’t listen to the arguments and won’t spend the time to educate themselves. Then when we file the appeal brief they are forced to figure out the issues and then suddenly realize they are wrong. Meanwhile, my client paid $5,000-$15,000 to file the appeal and brief.

    If that cost came out of the examiners pay, I bet they wouldn’t be so quick to wait until an appeal brief is filed to figure out what is going on.

    But what I resent most about this is the examiners that play a bluffing game with you. They want you to severely amend the claims and then allow it and you say no way you haven’t found art to reject these claims. They then proceed to issue a final rejection to force your hand. And, then when they find out you have the resources to come after them, they pull it from the appeal.

    Probably only about 1 out of 50 or 100 examiners cause these types of trouble.

    1. 14.1

      I am dealing with one of these examiners now. My claims are not even close to a 102 and I know for a fact that the invention is novel. Yet the examiner is making a ridiculous argument. I had an interview with his SPE who agreed with me that the rejection was bad. The SPE said so on the phone with the examiner and me.

      But still I will bet I will get a final from this examiner. He seems to just hate the company I represent. And trust me the rejection is just ridiculous.

      But what I bet he does is turn the 102 into a 103 where he makes all sorts of ridiculous arguments.

      You just know when you read an Office Action when you run into one of these nuts.

    2. 14.2

      I’d be interest in stories about how others have dealt with these nutty people.

      I had one about a year ago that refused to give me an interview for a non-final OA after an RCE. They told me the invention was ridiculous based on their experience in the industry. The examiner yelled at me on the phone and told me she had 30 years in the industry and this was just obvious and ridiculous.

      She would not respond to my comment that she then needed to find art that backed up her statement.

      I filed the response to the non-final OA and complained to the SPE. I made it clear that I was going to appeal if she rejected it again and the Board would see an examiner had refused an interview for a non-final OA.
      The SPE moved it to another examiner who allowed it without amendment.

      I do a lot of prosecution and write a lot patent applications. I seem to get one of these type of examiners about every two years. So maybe 100 interviews a year and then 1 in 200 turns into a nightmare.

      1. 14.2.1

        “I seem to get one of these type of examiners about every two years. So maybe 100 interviews a year and then 1 in 200 turns into a nightmare.”

        So statistically you’re making out like a bandit and your whining is ridiculous then?

        1. 14.2.1.1

          >>So statistically you’re making out like a bandit and your whining is ridiculous then?

          These are only the really horrendous ones. Not the garden variety problems.

          And, it is a pain for me. The applications I am prosecuting typically are pretty important and have already had a lot of money sunk into them. So, I can’t just abandon them or severely edit the claims. I am left in a position of having to figure out how to get around the problem examiner.

          I think I have won about 80 percent of my appeals, so I don’t appeal unless I have a good argument.

          1. 14.2.1.1.1

            “And, it is a pain for me. The applications I am prosecuting typically are pretty important and have already had a lot of money sunk into them. So, I can’t just abandon them or severely edit the claims. I am left in a position of having to figure out how to get around the problem examiner.”

            Totally hear ya bro. But do at least remember, you’re near retirement, and this too shall pass. Don’t let it bother you too much, you’re doing the best ya can I’m sure.

            “I am left in a position of having to figure out how to get around the problem examiner.”

            It really does separate the grand masters from the boys.

            “I think I have won about 80 percent of my appeals, so I don’t appeal unless I have a good argument.”

            That’s practically 100% if we presume a base 20% board error rate as a review body. That’s super good bro.

            1. 14.2.1.1.1.1

              This all needs to be investigated by Congress, the IG’s office and maybe even the FBI!

              There’s a reason we’re not even in the top 10 of innovative companies anymore (look it up)! There’s a reason we’re behind South Korea and China now! One reason being that individual inventors and start-ups CAN’T GET broad and enforceable patents anymore, regardless of what they do and the other being that the patents that DO issue are largely junk or legally worthless at the time of printing! Also huge expenditures of time & money are now needed to actually get a ‘reasonable good’ patent, whereas 100 years ago they could be gotten (and defended) for a song! How many billions is the US now WASTING every year, in futile efforts to get patents of any kind, much less those having any real legal value? Does anyone know what that amount is? $10B, $50B? $100B? And how much really valuable technology is now being lost (especially after publication) as a result of the PTO not granting allowance AFTER worldwide publication? How much technology are we losing every year, just because of some malicious or incompetent examiners deciding their egos were more important than even a billion dollar technology?

              This has got to change. Patents have to be legally ‘rock solid’ when issued by the US GOVERNMENT! Examinations have to be 95% consistent between examiners, and if that can’t be ensured (which is obviously intended as a joke), then it’s really high time to bring in the computer & AI, which EASILY CAN ensure that examinations are ALL done with NO incompetence, no bias, no ill-will and with 95%+ (if not 100%) consistency & accuracy! They could do this in hours or days too, FOR NOTHING (except a charge for electricity usage)! Appeals and trials could also make heavy use of computer analysis, which would greatly cut down on the amount of appeals necessary (to humans) and greatly speed them up and at much lower cost too! Litigation would go drastically down, because all parties would know that patents will mostly likely be upheld as valid and infringement would be mostly determined by rigorous computer analysis and test evaluations. Patents could then become available to all innovators and inventors AGAIN – regardless of financial status – like things used to be for over 150 years!

              (Copy of this comment retained).

              1. 14.2.1.1.1.1.1

                Meant to say ‘innovative countries’ NOT ‘innovative companies’ (even though that’s true too – lol). Wish there was an edit option.

              2. 14.2.1.1.1.1.2

                “One reason being that individual inventors and start-ups CAN’T GET broad and enforceable patents anymore, regardless of what they do and the other being that the patents that DO issue are largely junk or legally worthless at the time of printing! ”

                The gigantic amounts of prior art out there has nothing at all what so ever to do with that I’m sure. It’s all evil examiners pumping out a milly patents every year and a half or so that are to blame!

                “Also huge expenditures of time & money are now needed to actually get a ‘reasonable good’ patent, whereas 100 years ago they could be gotten (and defended) for a song!”

                Which is why they were known as the game of kings.

                “then it’s really high time to bring in the computer & AI, which EASILY CAN ensure that examinations are ALL done with NO incompetence, no bias, no ill-will and with 95%+ (if not 100%) consistency & accuracy!”

                Mmm, not so sure about that hoss. Even presuming that you could make an AI that would be a decent examiner after a year or so, rumor has it that it would be racist, sexist, homophobic, xylophobic, ageist, ableist, etc. etc. down the line. Then you would have to program it to be racist, sexist, homoephobic, xylophobic, ageist, ableist etc. to combat it’s inherent racism, sexism, homophobia etc. In either of which situation, it would have bias.

      2. 14.2.2

        “I do a lot of prosecution and write a lot patent applications. I seem to get one of these type of examiners about every two years. So maybe 100 interviews a year and then 1 in 200 turns into a nightmare.”

        No snark intended at all but this sounds rather good! Based on the file wrappers of other examiners I’ve skimmed, I would’ve guess the rate would be much higher. Perhaps my area is simply a circus.

        1. 14.2.2.1

          The problem for me is that the client doesn’t accept anything but a total victory from me. Every allowed claim allowed is scrutinized beyond belief.

          1. 14.2.2.1.1

            Totally hear ya, but I presume you’re almost surely making 200k+ a year, so I’m not going to be too sympathetic. Just look at all of that as $$$ in the bank, and if you’re beyond money, it’s probably retirement time.

      3. 14.2.3

        Your interview summary will be an exercise in creative writing? Some have suggested maybe call the TC Director, and if necessary make your calling of record.

    3. 14.3

      ” You should accept the fact that you are wrong”

      Brosef many of the time they don’t know that to begin with. In a perfect world I wouldn’t get 200+ frivolous or mistaken args in a year and have to sift the 5 valid and effective at overcoming a rejection args from them.

      “Maybe a financial penalty would help”

      Already have that. If you have to reopen whatever time you spent could have been spent doing OT making more money.

      1. 14.3.1

        “Already have that. If you have to reopen whatever time you spent could have been spent doing OT making more money.”

        I know what you mean, but that’s still a pretty mild penalty. Assuming the examiner is the root problem here, the second or further reopening should be cause for getting “unsatisfactory”* for the year. “NEVER reopen with a rejection that isn’t PTAB ready” would be an extremely reasonable rule.

        *For PTO outsiders, this sets you up to be fired the subsequent year.

        1. 14.3.1.1

          The problem is clearly systemic and through multiple levels. The “threat” of being f1red for being the type of “soldier” that follows the “just say no” dictates of those above is basically non-existent.

        2. 14.3.1.2

          “the second or further reopening should be cause for getting “unsatisfactory”* for the year. ”

          Depends perhaps on the circumstances, but in general I would tend to agree. But I personally haven’t even had an appeal/preappeal in like 3 years or 5+. Almost all issues can, with enough effort, be resolved pre-appeal. The real issue in the PTO, with some exceptions, in my own opinion, regarding appeals blowing up, is that mgmt doesn’t want to spend the money and make the examiner’s foot the time bill for that effort. Instead preferring to create an environment where the “shortest effort” pays best in terms of time.

  2. 13

    The issue with reopening is simple. It costs our clients a lot of time and money to file appeals. You shouldn’t force our hand like this. You should accept the fact that you are wrong and not make us write an appeal brief.

    Maybe a financial penalty would help. Something like -1000 chits for bonus purposes if you re-open prosecution after an appeal brief has been filed and don’t allow the claims.

    What I see is lazy examiners and arrogant examiners that won’t listen to the arguments and won’t spend the time to educate themselves. Then when we file the appeal brief they are forced to figure out the issues and then suddenly realize they are wrong. Meanwhile, my client paid $5,000-$15,000 to file the appeal and brief.

    If that cost came out of the examiners pay, I bet they wouldn’t be so quick to wait until an appeal brief is filed to figure out what is going on.

    But what I resent most about this is the examiners that play a bluffing game with you. They want you to severely amend the claims and then allow it and you say no way you haven’t found art to reject these claims. They then proceed to issue a final rejection to force your hand. And, then when they find out you have the resources to come after them, they pull it from the appeal.

    Probably only about 1 out of 50 or 100 examiners cause these types of trouble.

  3. 12

    That’s my old AU. I would say that withdrawal from appeals was relatively standard when I was there between 2007 and 2012.

  4. 11

    First, I hope this case reaches the Supreme Court, and that they will reverse it.

    Further, a major underlying cause is the lack of any negative consequences to an Examiner that issues a bogus OA, and unfortunately, as every practitioner knows, there are many such cases.

    All too often one sees an “Examiner From Hell (EFH)”, and the Office total failure of quality control on such cases is appalling. The Office should, IMHO, select a number of OA at random but at a quantity percentage-wise proportional to their reviews of allowances, and if the OA is inappropriate, make the Examiner face similar consequences.

    Furthermore, lately I see a significant rise in obviousness rejections that use a combination of four, five, and in one case seven references. Lacking an appeal, the same examiner that decides if s/he used hindsight… I believe that any obviousness rejection involving more than three references must be reviewed and approved by SPE and at least one more examiner.

    And finally to all those that suggest early appeal: all too many small inventor cannot afford the detailed and costly cost of preparing a good, detailed appeal, and a bad appeal is in my mind worse than none. Thus the system is again biased strongly against the small inventor.

    1. 11.1

      Do you think people who only complain about PTO problems that harm applicants should be considered reasonable, credible voices?

      1. 11.1.1

        Ben,

        Is there something that makes you think that Shalom would think otherwise?

        Or are you merely seeking to discount the fact that someone IS complaining about PTO problems that harm applicants?

        How do YOU feel about being made more accountable for bogus rejections or the type of game playing at point here?

      2. 11.1.2

        Ben ..”Do you think people who only complain about PTO problems that harm applicants should be considered reasonable, credible voices?”

        That is a question only a government employee could ask. The inventors and their representatives have to use the USPTO to obtain patents. There is no where else to go. A monopoly.

        What is wrong with complaining about problems of the USPTO? It is natural and what happens in private industry.

        Frankly, your questions is a bit fascist and scary following the narrative of the new D party that we must conform and follow and applaud what they do. That we have no voice in actual policies. Our job is to support them so that the archvillain Trump can be defeated.

        Only a f’ing government employee would complain about people complaining about the service they provide. Everyone in the private sector gets it because they can go elsewhere.

        1. 11.1.2.1

          Absolutely nothing in my posts suggests that one should not complain about the government. That is a complete strawman of your creation. Honestly Night, you’re better than this.

          The PTO makes a variety of mistakes, some of which harm applicants and some of which harm the public. My question was about the selective mindset that exclusively complains about one set of those mistakes. If you’re uncomfortable with that perspective, ask yourself how seriously you take those who only complain about the PTO’s mistakes that harm the public and never the mistakes that harm the applicants.

          1. 11.1.2.1.1

            Your question simply does not come across in your attempt to re-spin it as one of a balanced viewpoint.

            At all.

            I would quip that you are “better than that,” but you are not.

          2. 11.1.2.1.2

            Well with that spin Ben I will withdraw my comment.

        2. 11.1.2.2

          Agree!!! A big problem with government employees! The automatically have sovereign immunity and in addition are protected by their unions! It’s almost impossible to fire even a terrible and incompetent employee once they’re in the government. Can only try to make them leave of their own accord (which is really hard to do). Congress needs to step in like they did at the VA. Lots of people got fired over there after that! Now it’s being run a lot more like a business, with some real accountability. Vets are finally getting to see a doctor in 30 days or less and anyone there who’s doing a lousy job or is dishonest CAN get fired.

          Any examiner or supervisor who knowingly tries to block, delay, or ‘sabotage’ an invention clearly worth more than a million dollars, should not only get fired, but also possibly criminally prosecuted and a patent issued with an extended term. This might only be necessary in 1% or less of the examiners at the PTO! But as they say, one bad apple can spoil the whole bunch (worth maybe billions of dollars and lots of jobs). How many JOBS are we losing as a result of bad examiners? Anyone ever try to calculate that? How much technology do the Chinese get for free every year, as a result of the PTO giving them free access to patent applications that never get patented. Must in the many billions of dollars!

          Fix this financial and security MESS, Congress! That’s what we’ be telling our representatives in Washington! We’ll also tell them to bring in the computers to help do it! And, if it takes graphs, we’ll give then graphs!

          1. 11.1.2.2.1

            Sorry for typos – typing too fast & not proof reading enough. Have to type slower.

  5. 10

    I expected the examiner to be one of those with a near zero grant rate, but she’s not:
    link to patentbots.com
    She has a grant rate of 46%.

    Unfortunately, this kind of prosecution nonsense happens more often than it should.

    1. 10.1

      We have some with rates below 22%!!! What can you do there? Not much! There shouldn’t be ANY (significant) difference between examiners or groups. Wouldn’t ever have this happen in a private company! It’s just called ‘quality control’! Apparently the PTO either doesn’t know what it is, or just doesn’t care (and neither does Congress)! Another reason the Congress has to start asking some tough questions and do something about it!

      By the way, that’s a really great site to use! At least you can find out who’s fault it is you’re NOT going to get a patent (and usually it’s not the inventor’s or the inventor’s attorney’s fault).

  6. 9

    “Chudik had filed four appeals in the same case but the PTAB with the examiner backing-down each time.”

    The TC Director(s) who signed off on these re-openings should be fired. Not “laterally transferred” to an even cushier know-nothing, do-nothing job. Not having their usual, perfunctory “record breaking outstanding quality!!!!” yearly rated downgraded to merely “commendable” for one fiscal year. Fired. Here’s a box, pack your desk, and GTFO. Fired.

    What probably happened to the TC Director(s) who signed off on these re-openings? Probably a promotion.

    UFB

    1. 9.1

      My experience was that withdrawal from appeal was usually a win for the patent owner (and was encouraged internally to try and find common ground and avoid appeal).

      1. 9.1.1

        Anybody at the PTO “encouraging” re-opening needs to be fired. Yesterday. And even sooner if possible.

      2. 9.1.2

        I am not sure how long you have been out of the office, but your comment here — at face value — indicates a rather perverse indoctrination that spins the bad acts of the Office as being a “good thing,” and that you seem STILL to be unaware that such an action cannot be a good thing.

        ANY of what you posit as “good” (try and find common ground and avoid appeal” should have been done PRIOR to the appeal point. It is too late to ‘avoid appeal,’ and instead serves only as a ‘reset’ that benefits the Office and never benefits the applicant in view of time and resources already expended.

        That you somehow STILL think that this is a ‘pro-applicant’ thing is more than just a little chilling.

    2. 9.2

      “The TC Director(s) who signed off on these re-openings should be fired”

      I don’t believe TC directors need to sign off on reopening after appeal brief. MPEP1207 suggests that is delegated to SPEs.

      Though, in general, holding TC directors more responsible for their examiner’s shenanigans seems potentially fruitful. As SES employees, they have far less protection. And there are plenty of viable candidates waiting in the wings for their shot.

      1. 9.2.1

        “And there are plenty of viable candidates waiting in the wings for their shot.”

        TC Director is the biggest do-nothing, know-nothing job in the federal government. I’m sure plenty of useless, do-nothing, know-nothing SPE’s are dying to get the job.

        1. 9.2.1.1

          “TC Director is the biggest do-nothing, know-nothing job in the federal government. I’m sure plenty of useless, do-nothing, know-nothing SPE’s are dying to get the job.”

          I don’t know about that, my director’s calendar is usually pretty full, and he’s generally working on something when I’m going there. Meetings seeming to be quite a bit of that tho as with any person at that level in any org. But man, meetings can really take it out of you as I found out the other day when I had all day meetings for 2 days in a row.

          1. 9.2.1.1.1

            “I don’t know about that, …”

            Of course you don’t.

            1. 9.2.1.1.1.1

              Well when exactly are they do nothing (know nothing) if they are busy the whole day re re?

              1. 9.2.1.1.1.1.1

                6,

                Busy doing nothing is a thing.

                If you cannot grasp that, then you’ve been in the government far too long.

                1. They’re administrators, they’re administrating. If you don’t think administration is anything, that’s an issue with people not understanding organizations.

                2. You are treating the word “administering” as if any and everything falling under that category is somehow valuable, meritorious, or even merely “something.”

                  This is plain error on your part.

                3. “You are treating the word “administering” as if any and everything falling under that category is somehow valuable, meritorious, or even merely “something.””

                  Well it is something yes, but somebody usually has got to do it. That the majority of it is more or less useless I do not deny at all. But that is just the nature of the beast.

        2. 9.2.1.2

          “TC Director is the biggest do-nothing, know-nothing job in the federal government.”

          But in post 9, you suggested that they could be transfered to a “even cushier know-nothing, do-nothing job.”

          I think you should go back to your original shtick of ripping on the TQASs. We can all agree with that.

          1. 9.2.1.2.1

            Unity!!!!

    3. 9.3

      Yup!!! Exactly! Wouldn’t happen at any private company! Maybe the PTO SHOULD be privatized, even though that could pose it’s own serious problems (including security ones).

      Could maybe be done if every employee had to get top-secret security clearance first (but still not a total guarantee)! Part of the problem is that the PTO now operates financially like a for-profit or at least non-profit private company (i.e. is self funded), but it doesn’t act like one in most other ways! for one, it has no legal liability at all! They can screw up all they want, and never face any consequences and of course they CAN’T go bankrupt!

      Congress doesn’t seem to care much, because the moneys needed to run it don’t come out of taxes – anymore. That’s why it would be much better if the PTO was publicly funded (like it used to be), since their ‘product’ is directly in the interest of the public and our economy (at least in the long run). It would be a lot easier to hold them accountable too, if their budget was taxpayer provided (even if only partially)!

  7. 8

    Aside from contacting the SPE and, maybe, the Ombudsman, is there anything an Applicant can do when stuck in this appeal-reopen-appeal cycle?

  8. 7

    MPEP 1207.04. Contact the examiner’s SPE if the examiner reopens without following the procedure there.

    1. 7.1

      Four OA’s re-opening prosecution after appeal brief. First one signed by SPE because examiner was a junior then. Next three the examiner was a primary and no indication SPE approved re-opening. Complete failure on both sides.

    2. 7.2

      Unfortunately, I personally know of a former practitioner in our office who DID flag an improper reopening.

      There was NO consequence that was brought to bear on the improper action.

      Zero.

      Further, any art found in any such improper action (whether having merit or otherwise) must still be dealt with.

      1. 7.2.1

        “There was NO consequence that was brought to bear on the improper action.”

        How would you know?

        1. 7.2.1.1

          Presumably the same way he gets all his facts: Scatomancy.

          1. 7.2.1.1.1

            Awww pooor poooor Ben has “hurt” feelings again.

            Why don’t you just engage and answer 12.1.1 instead of being a Royal pansy?

        2. 7.2.1.2

          The old fashioned way – asking the examiner.

          1. 7.2.1.2.1

            The usual reply you will get from the examiner class is that having to do a “whole new OA for no counts!!!!!” is a consequence. It’s not, of course. The culture at the PTO is “we have the right to get it wrong as many times as we want/need.”

            1. 7.2.1.2.1.1

              I enjoyed your disparagement of a typical examiner response while engaging in typical empty attorney whinging about word meanings.

              Let’s ask 100 employees whether “you have to redo last week’s work with no reduction in the work required this week” is a “consequence.”

              1. 7.2.1.2.1.1.1

                typical empty attorney whinging

                Lol – from the “balance” guy…

              2. 7.2.1.2.1.1.2

                In the real world, if you are an employee who has to “redo last week’s work with no reduction in the work required this week” you get fired pretty quickly. Most of the “rework” I see on re-opening is worse than the “work” that required the “rework.” So no, it’s not really a “consequence” that anybody who works in the real world would consider consequential.

                1. “In the real world, if you are an employee who has to “redo last week’s work with no reduction in the work required this week” you get fired pretty quickly.”

                  You say that, but I see very little of such in real life on attorney’s side where they’re doing the same thing over and over. And I saw very little of it at previous jobs as well. If the mgmt at your place of employ can’t be bothered to set forth the task for you correctly (which is what having to write a 2nd action nonfinal is in reality because you’ve obviously typed up a document regarding mistaken something or other) they typically eat the costs. This is a truism. If you don’t do what your boss says on the other hand, that will get you fired obv. The little known fact is that examiners are being hired on a mini-managers (they only manage their own work and not that of others in some cases but still it’s management of work), esp at the primary level, but even somewhat at the junior level, and that’s why they eat the costs.

            2. 7.2.1.2.1.2

              “The culture at the PTO is “we have the right to get it wrong as many times as we want/need.””

              AAA always confusing official policy with mere culture.

              1. 7.2.1.2.1.2.1

                So you’re saying that “we have the right to get it wrong as many times as we want/need” is the official policy of the PTO?

                1. Because they have NO accountability – ever! They appear to now be a ‘sovereign’ agency of the government, answering to no one – not even Congress (b/c they don’t seem to care).

                2. “So you’re saying that “we have the right to get it wrong as many times as we want/need” is the official policy of the PTO?”

                  Um yeah duh, tho it’s not a “muh right”. Otherwise “reopening” wouldn’t be allowed. Further, it’s inherent in the “muh final adminstrative decision” administrative state setup under which the office abides. The administrative agency always always always across the whole gubmit gets that “muh right” (it’s not a “right” tho, its a consequence of responsibility). That’s one of the biggest criticisms of many of the large screw ups (see the veterans affairs, DMV, etc.).

                3. “Because they have NO accountability – ever! They appear to now be a ‘sovereign’ agency of the government, answering to no one – not even Congress (b/c they don’t seem to care).”

                  Not technically true, the congress made that admin setup way back in the day. The office “answers” for implementing exactly what the congress setup by stating they did exactly what congress said for them to do derp.

                4. Further, it’s inherent in the “muh final adminstrative decision” administrative state setup under which the office abides.

                  Actually 6 – this provides the opposite of the point that you are trying to make.

                  Things in Admin Law (like the APA) are expressly counter to your supposition.

                5. I’ve read em and I disagree with your view. If they didn’t want it that way, they’ve had over 50 years to change it. They didn’t change it, so that’s the way they want it.

                6. Lol – sorry 6, but that just does not square with the entirety of the systems put in place.

                  Sure, Congress has let things go to sh
                  1
                  T.

                  That changes nothing.

      1. 7.3.1

        I though it was a serious blog but then I was like “She”. Then the rest of the post revealed further ta rdation. Presuming that a junior managed to reopen a case without primary/spe approval is asinine. If it got signed by the primary, then they approved it. If someone had a conference regarding the case (perhaps the examiner skipped out tho that would be hugely rare, while just the spe discussed it with the appeals person, perhaps with primary there), then there is a near sure thing that either the primary or the spe approved it before the writing of the reopening action, and fairly surely that the spe was at least aware of what was happening. He just presumes that none of this happened because of omissions from written things on the record. False. And if no conference was in fact held then it was near surely because the spe decided he did not want to back the rejections and so ordered it to be reopened, or the junior discussed the case with the spe and one or the other decided not to proceed and instead to reopen. Derp. And there is no written record of that. If the examiner themself thought to reopen then the “spe approving it” would just take the form of them saying “go ahead and reopen” in the discussion between the two.

        ” but the new rejection that was issued responsive to the first appeal brief was NOT approved by a supervisory examiner”

        Well, it wasn’t made explicit for the written internal or external record that it was approved anyway, it near surely was tho if there was no conference.

        “but also possibly without even obtaining proper approval from the primary examiner (whose name was signed on the action!). How do we know this? Because the emails obtained show that the primary examiner (who’s name was signed on the action) followed up with the examiner, asking about the status of the case, after the examiner had already put the action into the system (as confirmed via the transaction history). And we know no SPE approved the re-opening because the action itself has no signature from a SPE. ”

        That’s just the primary seeing the reopening action on their docket and signing it, obviously they approve of it because near surely the spe approved of it already, likely verbally, without the primary kept in the loop.

        “And we know no SPE approved the re-opening because the action itself has no signature from a SPE. ”

        Absence of evidence is like tots evidence of absence n sheetz lelz.

        What a mor on, you read this drivel AAA? He might be right about the need for muh protections but the dude is obviously way out there on how to understand evidence.

        1. 7.3.1.1

          “…you read this drivel AAA?”

          That’s the best “patent law” blog out there. That guy mops the floors with examiners. I read his stuff and plenty of his appeal briefs and petitions and he does not tolerate any shenanigans from the cockroaches scurrying around in the dark over there at the PTO.

          As I’ve said to you many times, if you think it’s so easy out here, you’re welcome to join us and give it a try. But you haven’t. And you won’t. We both know why.

          1. 7.3.1.1.1

            It is clear that while 6 may have ‘wisened up’ a bit from his early “the Office is always right” k00l-aid days, he has indeed settled into a complacent “meh, I’m in it for the ride” mode of being a fledging government bureaucrat.

    3. 7.4

      That doesn’t help! The SPE will always stick up for their guys/gals. In fact, sometimes the Examiner is just doing what the SPE tells them to do (or ‘orders’ them to do)! Haven’t you heard about the SAWS program? That’s just a ‘black hole’ there!

  9. 6

    How is this ‘ethical’? The Constitution states that if deserving, inventors are entitled to patent ‘protection’. If the term expires before they can get that ‘merited’ protection, then that should be unconstitutional – period! They need to get ‘some’ reasonable patent term, regardless of how long it takes them to get it! It is the PTO’s duty to make sure the process of issuing them that protection doesn’t take too long! Indeed, it should be able to be – definitely – concluded in 1-2 years! In fact, using computers & AI, it should be able to do this in one week or less! Bias has no role in determining who should & shouldn’t get a patent and ‘secret’ programs such as SAWS have no place at the PTO! Examiners who are there to play games, or just exercise their egos, need to go! Congress must allow firing Examiners for malicious actions or other causes.

    1. 6.1

      “In fact, using computers & AI, it should be able to do this in one week or less!”

      And you get get a free unicorn with every application submitted.

      1. 6.1.1

        You do know what computers can do now, right??? We’ll be heavily investing in this specific area! We’ll see who comes out ahead in a decade!

        1. 6.1.1.1

          I think you’d be better off investing in GME than an automated patent examination company.

          1. 6.1.1.1.1

            That’s because you don’t think ahead enough! Can’t help you there!!! LOL!

          2. 6.1.1.1.2

            Computers don’t make mistakes, don’t have ‘bad days’, don’t get angry or have secret agendas, and don’t try to delay, block or sabotage even good applications, for reasons that may often be kept secret (such as SAWS). Computers also don’t suffer from bias, ignorance, incompetence, laziness, or any of the other many reasons ‘humans’ (including judges and juries) sometimes improperly or incorrectly decide things.

            Computers never get stressed out, or burned out, either! They also don’t have to be paid or get benefits or time off or weekends off or holidays off. Patent applications could be examined 24/7, 365 days a year! You don’t think that would be great and lower costs by maybe 95% or more (including litigation costs)! You don’t think that will be possible in a decade (after we’ll already be ‘passengers in’ self-driving cars)? You don’t think we could also become ‘observers of’ computerized patent analysis and examination? We do & we’ll be betting on that big time! Will become the next multi-billion dollar technology, and Google & IBM are already aware of that! IBM’s ‘Watson’ probably can’t wait to get started on it! LOL!

            1. 6.1.1.1.2.2

              “You don’t think that will be possible in a decade (after we’ll already be ‘passengers in’ self-driving cars)?”

              No, I do not.

              Further, you are clearly a muttonhead. If one had technology capable of automated examination, they would be too busy applying it to much more profitable ends than examination. This is as if someone suggested that they were close to developing inertial dampeners (like in Star Trek), and were going to apply them to a skateboard. It is not only ridiculous, but a little sad.

              1. 6.1.1.1.2.2.1

                You’ll be crying in a few years!!!

                How much time and money is spent every year (around the world) just APPLYING FOR patents (many of which don’t even issue) and then trying to protect them? Many BILLIONS, isn’t it? Does anyone even know? Maybe we’ll find out. Google has already proposed analyzing patents with AI an if Google says they ‘think they can do it’ – THEY WILL!

                Then count up all the things computers are already doing (better than humans), some in very specialized fields, including law!

                1 Beat ALL humans at Chess.
                2 Beat ALL humans at ‘Go’.
                3 Beat ALL humans at Jeopardy.
                4 Fold proteins (something almost impossible for humans leading to new drugs!
                5 Do even the most advanced math & physics.
                6 Let Musk’s rockets land vertically – on a dime!
                7 Read x-rays BETTER than radiologists!
                8 Translate between languages.
                9 Answer phones and smart speakers & give answers to questions in ‘natural language’ – chatbots.
                10. Do face & voice recognition on millions of people at the SAME TIME!
                11 Tell you the name of any song or piece of music you are listening to.
                12 Do most of ‘discovery’ for lawyers now.
                13 Already helping examiners with their prior art search.
                14 Simulating & modeling everything under the sun, including to predict the weather! Can you do that?
                15 Trade stocks faster than any human can!
                16 Provides a competitive edge to e-commerce businesses.
                17 Sports betting!
                18 Quality control.
                19 Driving cars.
                20 Smart drones.
                21 Smart weapons.
                22 Help with medical diagnosis.
                23 Warehousing and Logistic Supply Chain.
                24 Predicting customer behavior & buying habits.
                25 Drug design & simulated testing (in days, not years)
                26 Translating sign language in real time.
                27 Discovering new materials faster than ever.
                28 Writing short articles for newspapers.
                28 Precision medicine.
                .
                .
                .
                Lots more too . . . “Google’s DeepMind A.I. beats doctors in breast cancer screening trial”

                Soon the list will include ‘error-free’ patent examination and patent ‘drafting’ (in minutes or hours) – basically for free!

                But, that’s OK – boomer – leaves more stock for us! we can’t wait! Might even be a LOT BETTER than inventing (or patent law)! LOL!

                1. I’m getting the sense you’re an “independent inventor” (read: crank), and that you’ve likely been hurt and disillusioned by examiners and attorneys alike. You just enjoy your fantasy, and keep the bon mots* flowing.

                  *I’m honestly not sure which is my favorite! I think it may be a tie between the inplication in 6.1.1.1.2.2.1 that Google is a paragon of follow through (Check out killedbygoogle.com ), or how government employees have “sovereign immunity” in 11.1.2.2. Good times.

              2. 6.1.1.1.2.2.2

                Sure hope you’re not a patent lawyer or examiner – especially one who can’t retire yet!!! LOL!

              3. 6.1.1.1.2.2.3

                Nope! Bad guess! I’m mainly an investor & entrepreneur (so I have to be more right than wrong).

                Anyway, when talking (disparagingly) about ‘independent inventors’, do you mean like Tesla or Edison, or maybe the more recent inventor of CRISPR technology?! You mean that researcher & inventor (i,e. crank), that also happens to be a woman?! Like to see you call her a ‘crank’ (but then you wouldn’t have the guts, would you)!

                How about the guys that invented graphene a few years ago and got a Nobel Prize (and patents) for it – genius??? I think that ‘breakthrough’ invention cost them all of 5 cents worth of scotch tape!!! But then you wouldn’t know anything about actually ‘inventing’ anything, would you?! LMAO!!!

                You sure as hell don’t know what computers can do, or anything at all about AI, so you won’t be inventing anything involving them! I also now know your investment decisions must be a joke too!!! LOL! Let’s see who does better 10 years from now (but I already know)!!!

    2. 6.2

      Your interpretation of the Constitution is incorrect. It does not say that inventors are entitled to patent protection. It states that if Congress wants to grant such protection, it may do so. The Constitution does not say Congress must offer such protection. Congress has the power to offer such protection; there is no part of the Constitution that orders them to exercise that power.

      Granted, it would be rather foolish and very detrimental to this country if Congress did not exercise this power in some way, but that is an entirely political decision.

      1. 6.2.1

        No! It’s CLEAR what the Drafters intended, or they wouldn’t have written anything at all. Obviously Congress & the people have a right to come up with all kinds of rights and laws they want (as long as they are Constitutional). Patents would never have even been mentioned in the Constitution (much less in Article I) had they not been considered ‘vital’ to the founding of the country! Patents are one of the most important rights that the Founders wanted ALL Americans to be able to exercise. The Constitution merely gave Congress the right to ‘implement’ patents in ‘any way’ that would abide by their very generally expressed intent. I was not just a ‘suggestion’ to them! And patents were clearly not intended to only be of benefit to the wealthy (who are the only ones that can afford to get – and protect – them now)! Patents are now class-specific! NOT at all what the Drafters intended. They wanted EVERY creative American to be able to financially benefit from obtaining patents. Congress has now destroyed that possibility. It’s a ‘rigged’ system now! The Founders didn’t want ANYTHING to be ‘rigged’.

          1. 6.2.1.1.1

            Yup! Thanks for the reference.

            “Indeed, very little is known about what the Framers of the Constitution thought about patents and copyrights because, as Madison succinctly explained, the need for both patents and copyrights was considered self evident and without question by the Framers.”

            It’s obvious they thought patents & other IP were fundamental to the founding and ‘prosperity’ of the country and to ‘the equitable distribution of wealth arising from IP’! We don’t have an equitable distribution of wealth from IP anymore! That’s obvious too!

    3. 6.3

      Let me remind you that when the Office finally stopped hiding behind a “What are you talking about? Secret Program? Hmm, tinfoil hat there” mode of operation, they let slip that SAWS was only but ONE of many such programs.

      It is quite apparent that the meaning of 37 CFR 1.2’s “The action of the Patent and Trademark Office will be based exclusively on the written record in the Office.” is – shall we say – selectively “interpreted.”

      1. 6.3.1

        I can’t believe I HAVE TO agree with you there!!! LOL! The one time you are actually making some sense!

      2. 6.3.2

        +1

    4. 6.4

      100.0000% agree!

  10. 5

    Patent term should be adjusted if Examination is intentionally lengthened beyond 3 years, as a result of the Examiners intentional efforts to do so (as determined by outside analysis). If an issued patent is largely the same or identical to the originally filed application & claims, then the term should be extended started from 3 years! That’s only fair & patent laws, should above all, be fair – given they are rights provided in the Constitution & not just made up by the PTO! Congress needs to change this, to make it clear to Examiners that they cannot play ‘power games’ with applicants, just to get their way and to make it clear they can be held accountable for engaging in ‘shenanigans’ ! Right now they face NO consequences for ANYTHING they do (short of maybe murder).

  11. 4

    Seems like the right reading of a bad law. The examiner’s behavior here should have earned the applicant some sort of PTA.

    1. 4.1

      Should have resulted in the Examiner’s firing!!! There has to be accountability at the PTO, just like there finally is at the VA!

    2. 4.2

      Agree 100%. The law would be more fair if it gave Chudik some time back for this appeal-&-reopen cycle, but that is not the law that Congress wrote.

      1. 4.2.1

        This definitely seems like an injustice to the inventor. The problem is that the law wasn’t written to deal with Examiners trying to game the system. It’s hard when drafting a law to anticipate the loopholes that clever people will come up with in order to game the system. That being said, it’s hard to write an equitable provision into the statute for the same reason. There would be endless appeals based on how wonderful something is (or sob stories about inventor’s trying to feed their families) arguing that their patent term should be extended. There definitely is no simple answer, especially in a case like this.

    3. 4.3

      This stinks. An applicant can get dinged for prosecution laches if he repeatedly delays examination; an applicant should get extra time if an examiner engages in this behavior. It may be the correct reading of the statute, but it would be nice if for once the CAFC held a rogue examiner’s feet to the fire.

      1. 4.3.1

        AM – I am going to have to disagree.

        The Ends (no matter how noble) do not justify the Means.

        It is simply NOT proper for the CAFC to write its own version of the law when it is Congress that SHOULD BE held accountable.

        1. 4.3.1.1

          I believe that reversing the unjust ruling is the job of the Supreme Court. There is a reason why they are called “Justices”.

          Waiting for congress to change anything is a bit too glacial.

          1. 4.3.1.1.1

            Again, sorry but no.

            The Ends do NOT justify the Means — no matter how noble the Ends may be.

            They may be called “Justices” and they may inhabit the body called the “Supreme Court,” but they operate in a very carefully controlled and structured setting in which they do NOT have absolute power.

            I have been fervently on record for when their Frolics are harmful (even as they may view their desired Ends as ‘just’), and just because I may like these Ends, does not change the Legal Reasoning and underlying Rule of Law.

            1. 4.3.1.1.1.1

              We know you cannot help it. But it’s still funny to us to see you do the monkey dance.

              Monkey , Dance ! $$$$. [what a maroon]. But, Thanks $$$

              1. 4.3.1.1.1.1.1

                I am curious if you are using some type of random generator for your decisions to select past threads and play your game.

  12. 3

    Note that the last sentence above applies equally to PTO handling of applicant’s filing multiple sequential application re-filings by serial RCEs, continuations, CIPs, divisionals, etc. Only after Lemelson’s cases did Congress [not the PTO] take some serious action. With a new patent term but unduly complex term extension statute that has generated several Fed. Cir. cases.

  13. 2

    A repeated avoidance by certain examiners of writing an Examiners Answer in response to applicants Appeal Brief by withdrawing and changing rejections is unusual but unfortunately not at all unheard of by any means. Where to complain? It is another example of a long time PTO management deficiency and part of an overall long time PTO failure of docket control and case actions by Original application filing dates rather than RE-filing dates, which leads to both long-delayed patent issuances and patent term extension statute issues as here.

  14. 1

    Does not the admonition (to the applicant) come across more than a bit shallow when it is the examiner (and NOT the applicant) that is short-changing the Appeals process?

    That said, the attempt here to rewrite the statute to arrive at a particular Ends deserves to
    F
    A
    I
    L

    An Examiner is clearly not the Board, and without a Board decision, that “C- Delay” is just not there.

    I would also add that what is missing in the discussion here – and often in discussions of why Congress added Patent Term Adjustment at all – is the sense of the Quid Pro Quo and the fact that publication is basically a taking of the Quo without providing any Quid.

    1. 1.1

      The U.S. provides the option to request nonpublication. And if you cannot, because you intend to seek international protection, then that is not really the U.S.’s fault.

      1. 1.1.1

        Only partially agree.

        I certainly see that one seeking protection in other Sovereigns (who have different Quid Pro Quo agreements) is forced into a choice of accepting lesser value propositions and those choices have an obvious impact back in the States.

        Once you enter some other Sovereign’s system and you allow publication by your choice, it makes little sense to “not” have publication here.

        But my beef is NOT with your fact pattern and IS with the p00rly written statute that gives Examiner’s the “endless loop” possibility.

        THAT very much is the fault of the U.S.

      2. 1.1.2

        I would further add that our default advice (even for those that typically seek international coverage) is to file with a non-publication request, since such requests can be revoked, but you unduly sacrifice the (better, much better) traditional US Sovereign Quid Pro Quo deal otherwise.

        (I will also remark that the Congressional (not how the Patent Office actually applied it) intent on the first window was that by that time, a meaningful first action gave you enough ‘flavor’ so as to be able to make an informed decision to fight for coverage or express abandon and thus keep your innovation under wraps)

        1. 1.1.2.1

          Understood, but is that worth the risk in most cases? If your docket system and case attorney somehow ever forgets to withdraw one of those automatic non-publication requests for doing any foreign equivalent filing that will be fatal to that patent under that statute. That would make for a potentially expensive and easy to lose malpractice case.

          1. 1.1.2.1.1

            Any such date is every bit as important in any other date that is a hard deadline during prosecution.

            It is amazing how often a client starts out with non-publication, thinking that maybe later they might change their mind, and at the designated time realize that continuing — in private — and only in the US provides a much stronger market position.

            Granted, mileage may vary, and one can easily see the withdrawal from non-publication itself being a rather painless and even routine exercise.

            One should never be afraid to engage in such value-add prosecution based on the fear of a screw-up. If you are, then you should get into some other line of work.

      3. 1.1.3

        Also, unless a patent application is not for a real product, and is a U.S.-only application requesting non-publication, the Quid Pro Quo will have shot its quid as of the product launch date unless that product contains or was made by trade secrets that are disclosed in the application and are not disclosable from analysis of the product, its function, or its published literature.

        1. 1.1.3.1

          Minor point — at best, and as is often typical, grant follows with that Quid that you think somehow lost.

          Minor, as once a launch point is actually reached, other ‘real-world’ business factors are also in play.

          This also has value in portfolio strategies in which the patent family includes items that do not make a strategic cut for actual product, but still provide buffer zone that competitors cannot intrude into.

    2. 1.2

      Huzzah, I agree.

  15. 0

    However, under the statute, the 3-year delay counter is cut-short by an RCE filing. Thus, Chudik’s RCE filing cuts-off that form of adjustment.

    That was his big mistake. Too many practitioners don’t think twice about filing a RCE. However, when the issued patent is expected to be really valuable, then the filing of a RCE should only be performed as a last resort.

    1. 0.1

      Interesting – and VERY counter-intuitive to the vast percentage of prosecution.

      As I recall during the “count-update” (aka, end the RCE gravy train) days, nearly ALL prosecution has at least one RCE, and a substantial number has at least two.

      One of the “jokes” was that you did not actually get a reasonable effort (search and/or reasonable prior art claim mappings) until after the first RCE.

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