by Dennis Crouch
The Federal Circuit recently wrote about the GATT-Bubble in Hyatt v. Hirschfeld decision. “[I]n the nine days leading to June 8, 1995, the PTO reported that it received and processed over 50,000 applications—one-quarter of the entire year’s projected filings.” Pre-GATT applicants had a comparative incentive to keep their patent applications pending longer because patent term was calculated based upon the issue date.* This was especially true in the early days prior to creation and expansion of Patent Term Adjustment. 1995 was 26 years ago — most folks who are patent attorneys today were not yet even in law school at the time. That summer, I was working at a bacon factory in Frontenac Kansas (The $5.15 per hour was substantially above minimum wage of $4.25).
The bulk of pre-GATT applications were processed and issued/abandoned roughly as expected. However, there has been quite a long tail of pending applications. By 2010 the number was down to about 600 pre-GATT pending applications. We know now that about 380 of these were associated with Gil Hyatt; the remaining 220 were associated with other applicants.** By 2016, the number was down to 20 non-Hyatt pre-GATT pending applications, and now in 2021 there are only 2 non-Hyatt applications remaining. There will be a few more years of litigation, but if the PTO’s win on prosecution estoppel holds, this chapter will finally be closed.
= = =
In recent years, all of the pre-GATT patents have issued to Personalized Media Communications (PMC).
- U.S. Pat. No. 10,715,835 – 2020 Signal processing apparatus and methods
- U.S. Pat. No. 10,616,638 – 2020 Signal processing apparatus and methods
- U.S. Pat. No. 10,609,425 – 2020 Signal processing apparatus and methods
- U.S. Pat. No. 10,523,350 – 2019 Signal processing apparatus and methods
- U.S. Pat. No. 10,334,292 – 2019 Signal processing apparatus and methods
- U.S. Pat. No. 9,674,560 – 2017 Signal processing apparatus and methods
In addition, a number of unclassified pre-GATT cases have also moved through. An interesting one is a patent issued to Lockheed Martin in 2020 on a “method for opening a combination padlock.” U.S. Pat. No. 10,669,742. Basically, this is a method and apparatus for figuring out the combination on the padlock. The application was filed back in 1990 and kept secret by order of the Department of Defense until 2018.
= = = = =
* Applicants who beat the 1995 deadline were granted given either a patent term of 17 years from issuance or else 20 years from filing, whichever was longer as calculated at issuance. In that scenario, there were very good reasons to file before the deadline if the invention was ready for patenting.
** Note – for this essay, I’m ignoring old applications that were kept secret and denied issuance by the US Government.
OT, but the IPWatchdog patent blog notes what appears to be a significant trend. An increasing percentage of all new patent suits being by heavily-investor-financed PAEs [professional patent assertion entities for which multiple suits on acquired patents is their sole business]. Reporting again that a recent week is “another heavy one for patent filings in district court (96 complaints), driven primarily by a deluge of new IP Edge complaints (.. it looks like more than 50)…”
“IP EDGE brings 30+ years of collective experience in the patent space. We offer expertise in all phases of patent monetization. .. Industries: Legal Services; Company size:
Myself Only; Headquarters: McKinney, Texas; Type: Privately Held..”
I am shocked – shocked I tell you.
Gee, Paul sees only a “oh N0es, Tr011s” motif…
The actual beginning of the article:
“ From increasing damage awards into the billions of dollars, to a new hot patent court for plaintiffs in West Texas, to increased financing available from litigation funders to growth in competitor lawsuits with large entities looking to monetize their own portfolios, there is a changing face of patent litigation as we head into a post-pandemic world.”
For the rest of the story (in the best Paul Harvey tones): see
link to ipwatchdog.com
I did not mention “patent trolls,” as you did, but thanks for the additional quote from the IPWatchdog patent suit tracking report refuting various blog comment denials of their existence and denials of the financial value of patents under current patent law.
Absolutely wrong takeaway Paul.
Naturally.
In January 2019, Dennis identified one patent US 10,025,588 that was given 13 years patent term adjustment. This was after a successful reversal on appeal. The PTO statistics seem to focus more on the average adjustment than the outliers.
Thanks, yes, 10,025,588 got 13 years of PTA for two appeals in a row due to new rejections applied after the first appeal reversal. [Hopefully, not that common?]
“Could someone please share with us Mr. Harvey’s recipe for successfully advantaging PTO docket miss-management?”
I don’t have his recipe, but for giggles I took a brief spin through the IFW of U.S. 10,715,835. There was an examiner initiated suspension. Eventually the examination continued and he appealed. One of the rejections was an obviousness double patenting rejection. Examiner cited Schneller. No attempt to provide a basis for that precedent being applicable. And as the Board noted on about page 13 of their decision, the examiner never bothered to 1) point out the difference between the claims being examined and the claims being used to reject for double patenting and 2) never provided any explanation why any of the differences would have been obvious.
Just more record breaking outstanding quality work from the PTO examining corps and its merry band of useless, do nothing, know nothing, brain dead GS-15 class.
+1 (for this comment)
– 1 million (for the patent office)
As I have long noted, emphasis should be on improving examination quality and NOT on applicant ‘quality.’
Examination quality should be robust against a large spectrum of inputs, and should be built to withstand both ‘high-level’ professionally prepared inputs as well as ‘lower-level’ pro se type inputs.
Quite in fact, the ‘lower-level’ items are actually easier to examine – IF examination rather than applicants were to be put under the microscope.
In today’s ‘philosophically driven’ “Equity” environment, with its plethora of virtue signaling, the better expenditures of energy would be on making the examination better – in many ways, from actually knowing and faithfully applying the law (and yes, I am looking at you, MPEP writers who BADLY misconstrue case law), to actually provide suggestions to avoid ‘traps for the unwary.’
Imagine that for a moment – an Office that sought to improve both examination and granted claims such that those seeking innovation protection obtained durable (and still within being duly granted) enforceable rights.
(yes, I do recognize that the courts would also need to buy into such a notion, but one step within the power of the administrative agency itself would be over its own examiners)
“In today’s ‘philosophically driven’ “Equity” environment, with its plethora of virtue signaling, the better expenditures of energy would be on making the examination better – in many ways, from actually knowing and faithfully applying the law (and yes, I am looking at you, MPEP writers who BADLY misconstrue case law), to actually provide suggestions to avoid ‘traps for the unwary.’”
Hate to disagree bro, but I have to. My mgmt class of individuals in the commerce dept is all the time sending me virtue signals via emails (this or that pride month, this or that recognizing this or that victim group), thus I take it that, on the whole, virtue signalling is much more important than anything else at the office. I’m literally pretty sure that is the majority of the stuff I get from them now. And they don’t even give us othertime to appreciate the sheer virtuousness of their signal, or to ponder our virtuousness, or enact virtuousness. I guess this is because virtuousness is the sine qua non for all office business.
THAT there is a surplus of virtue signaling does NOT — in any way, shape or form — mean that such is proper, let alone more important.
“THAT there is a surplus of virtue signaling does NOT — in any way, shape or form — mean that such is proper, let alone more important.”
Sure it does brosefulous. Also, when would you guess that you can you start making direct payments to my bank account on account of slavery etc.?
Meh, I find your attempt at tr011ing to be rather b0r 1ng.
link to youtube.com
That is SO you.
Just your infrequent reminder that the phrase “virtue signaling” means absolutely nothing, and is merely a cynical phrase to wave away anything you don’t like.
Hey Mr. Ostrich, how is that sand that your head is buried in?
The “examiner initiated suspension” is suspect if very long, but said U.S. 10,715,835 has 29 total years between its indicated “Priority Date: 1981-11-03; [final] Application Date: 1995-06-07 [based on a whole series of indicated serial continuations]; and Grant Date: 2010-06-29.” That 29 years is its true pendency from its true filing date, and its patent term will run until 2027, 46 years from its true filing date! Surprise – it looks like it is in litigation.
I happened to look at the same file wrapper, and was similarly dismayed.
Though I’d call it “an Office initiated suspension” since it’s indicated that the PTO and the applicant came to an agreement outside of prosecution as to how the applications would be suspended.
Thanks very much Dennis. But I have to quibble that you have not given a John Christopher Harvey due honors for his apparent achievement of becoming the number three in history submarine patents admiral inventor award for those above-listed pre-GATT patents which you noted as issued after so very many years to Personalized Media Communications for 17 more years. Could someone please share with us Mr. Harvey’s recipe for successfully advantaging PTO docket miss-management?
Does anyone know how many of the indicated 380 2010 pending pre-Gatt Gilbert Hyatt applications are still pending now?
P.S. I was reliably informed at the time that the patent term change effective June 8, 1995 was added into the GATT treaty Congressional enabling statute in order to stop Lemelson or others from further using multiple sequential continuations to greatly delay patent term periods. This is why Hyatt and others can no longer file continuations or divisionals of applications filed more than 20 years ago.
I wonder what Hyatt’s PTA would be if the current laws were in place back then?
Good point O.C. The potential PTO embarrassment for having to grant huge patent term adjustments [patent term extensions] for huge PTO delays is undoubtedly an influence on PTO docket management of post June 8, 1995 applications.
The PTO doesn’t care one bit about PTA.
If the patentee got the PTA on the front end, and had the due date of the first maintenance fee moved back, the PTO might care. But giving a bunch of term extension on the back end, when most patentees don’t pay the last maintenance fee, is meaningless. (For most patentees. Obviously not pharma.)
+1
Re: “The PTO doesn’t care one bit about PTA”. That may well be true as to individual applicants, but it is Congress that set up the complicated PTA system, and it is having extreme-length PTAs being brought to the attention of Congress and/or the press that could be the “potential PTO embarrassment” I was thinking of. Does anyone have examples of recent patents with really extreme PTA’s?
I SAWs what you did there…
I found that the subject Hyatt v. Hirschfeld Fed. Cir. decision says at one point that: “As relevant to this appeal, Gilbert P. Hyatt is the named inventor on 399 patent applications..”
But if that is the present number, that seem inconsistent with the information from Dennis above that 380 in 2010 Gilbert Hyatt had 380 pending pre-GATT applications?
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