Did you know: A few thousand patent applications are currently lying dormant at the USPTO with their prosecution “suspended” under 37 C.F.R. 1.103(c)/(d). Part D allows allows for a patent applicant to defer examination for up to 3-years from the application effective filing date. To take advantage of the deferral, the filing and publication fees must be paid; the case must be in condition for publication; and have no issued office actions. Part C suspends examination following the filing of an RCE for up to three-months.
One company – Intel – is responsible for the majority of applicant-requested suspended prosecution, with 2000+ applicants pending in suspended form. FujiFilm and Lyft are the two other big users, each with 100+ pending cases.
Would your clients benefit from a little bit more time?
From the applicant’s standpoint, especially large ones, there is a definite financial incentive in not having to allocate resources to something which may not pan out in the end, especially if an external firm must be retained. Three years would mean something like like 1-2 office actions, each of which would cost a neat 4-digit(+) amount to reply to. If you can defer some of that until you manage to weed out the least interesting prospects, that much is gained. And if things drag out long enough, you might eventually save on the post-issuance fees, since the schedule is based on the number of years after issue (large entity, 3.5y: 2000$; 7y: 3760$; 11.5y: 7700$). A application that issues around is 8th after filing might run nearly to its 20th anniversary, while potentially saving the 11.5y fee.
Most EP applications, even domestic originated ones, go through the PCT route, which already provides a built-in deferment of a couple of years, as few are in shape for a direct grant upon entry in the regional phase. In comparison, most applications in the US follow the national route.
Then keeping an EP application pending is quite a bit cheaper than having a granted patent, even if far fewer translations (which used to be by far the largest cost driver) are required since the London protocol, as the aggregate cost of national renewal fees quickly overtakes the large EPO internal ones.
Another advantage is to keep the competitors in the dark about the eventual coverage of the patent…
(I’ve had several times the frustration of finally proceeding to grant, only to see the applicant drop the application. Could it be that the claims were properly trimmed to size in view of the prior art?)
The EPO has no formal deferment mechanism, but there are plenty of ways of slowing down the procedure. The first one of which is to conditionally request oral proceedings. (It’s almost malpractice not to demand them, even if you never intend to attend them). Summoning an OP requires the coordination of three examiners, two of which getting no production credit for at least one-half to one day of work. (Preparing the file, attending the OP, deliberating, writing the minutes, reviewing the decision). The first examiner used to get a fraction of a point more for a refusal — but none if an OP results in a grant. You can imagine that not a few examiners aren’t exactly enthusiastic at the prospect. And then the resident cattle prod (a.k.a. “director”) rolls his eyes and asks you earnestly “Must you really go through that? There must SURELY be another solution…”
Around 2005, a US biotech applicant sent a letter to the EPO ordering them not to touch their application until instructed by the applicant. It went on to exhaustively list all the dilatory tricks they intended to use. The tone was rather shocking. I’ve unfortunately lost the file number, so I don’t know whatever happened of it.
Quite a few U.S. applicants also use the PCT route.
Thanks for this, Dennis. Do you have a list of the corporate entities on the Fujifilm applications that have been suspended, by any chance? I’m curious whether FujiFilm Cellular Dynamics International is one of the entities involved, or if it’s all on the hi-tech side of FujiFilm’s business.
ALl of the assignees/applicants are either (1) FUJI XEROX CO., LTD. or (2) FUJIFILM Business Innovation Corp.
Thank you!
I am sure that Breeze will weigh in with something stellar.
And I’m sure you’ll show up to Night Wiper’s c!rcle j#rk.
^*^ keep on emulating Malcolm.
You’ve moved from unthinking political views to unthinking patent views.
You likely won’t even understand this put down.
“emulating Malcolm”?
I am sure that is MM. I am going to ignore all Breeze comments.
I thought so at first, but Greg actually made a good point that it was someone else (based on avatar), and sure enough, upon my further review, I concluded that it was likely NOT Malcolm.
There is a definite similarity when this other person went “off-patent,” and it appears that this is seeping into his emotional rants (based on the WHO he is responding to — even in regards to patents.
“I am sure that is MM.”
Says the nonsense spewing mental case between sobs about “defamation”.
Being mistaken for you Malcolm is one of the worst insults imaginable.
This (rebranded) person should not take such insults lightly.
I would also move as much as possible to other forums. I think as long as Dennis just allows MM to get on here and make defamatory statements that this forum is second rate at best.
Companies do it because their inventors invent and it takes a while to get the product out and they don’t want the publication or allowed patent to be public until the product is out. Another reason is that inventors invent new standards and the company wants to wait to see the exact language adopted in the standard so the claims can be customized to the language in the standard such as 3GPP.
You cannot file a non-pub with a request to defer examination, and claims can be amended to meet emergent standards if the spec supports the amendment, but cannot be amended to meet emergent standards if the spec does not support the amendment, so companies that do it for your stated reasons are not accomplished those goals.
DC, really? You really think you know better than me and the top law firms in the country? We know what we are doing. I’ve written 100’s of claims that are charted to standards.
I don’t feel like explaining to you why you are wrong. Reread what I wrote and take a step back and think.
DC,
Your starting truisms do not support your conclusion.
You have lost me. The truisn that you can’t request deferal along with a nonpub seems to be a true statement. So i don’t understand how requesting deferral delays publication. Imight be missing something, but what?
“Companies do it because their inventors invent and it takes a while to get the product out and they don’t want the publication or allowed patent to be public until the product is out.”
Followed up with, “You really think you know better than me and the top law firms in the country?”
As you are apparently incapable of reading a simple rule, then yes, we think we know better than you. And “the top law firms in the country.” Though I suspect “the top law firms in the country” have at least a few people who can understand a simple rule.
Really? I can’t. Bet I do know what I am doing.
I often file 37 C.F.R. 1.103(c)/(d) requests for the purposes I just said.
Maybe you should read the rules some more and think about what I said.
Not playing these games with you.
You sound like a redux of MM.
Fair enough if you frequently file Rule 103(c) requests. You and your client know whether it is valuable to delay prosecution for three months, but we do not.
If you are filing Rule 103(d) requests for applications that have a non-pub request, however, then you are plainly wasting the client’s money. As DC and Breeze have noted, the rule plainly does not permit the PTO to grant the requested delay for an application with a non-pub request. You can, of course, file the request, but it is a useless waste of resources.
>>>Fair enough if you frequently file Rule 103(c) requests…
Correct, and usually these are filed for products that are going to come out within a year. You see, believe it or not, many, many companies just copy what some of companies do. They read the patent application and copy it and try to get it out before our company.
For 103(d), you should have thought about it a bit more. This is used when an application is directed to a standard. You delay the prosecution (you don’t care if people see the disclosure) so that you can amend the claims to match the standard. What happens in standard work is that often the inventors invent the portion of the standard (and there is no prior art and they have already disclosed it) but the actual words of the standards are not fixed or the standard may use one of several disclosed embodiments. So, you delay prosecution (not disclosure) so that you can amend the claims to the finalized standard.
Anyway, there you go. Some of the secrets of how we use § 1.103. Pretty standard among the top IP firms.
“Companies do it because their inventors invent and it takes a while to get the product out and they don’t want the publication or allowed patent to be public until the product is out.”
Followed up with, “You delay the prosecution (you don’t care if people see the disclosure)…” and “So, you delay prosecution (not disclosure)…”
Move the goalposts a little more.
To be fair, go back and re-read his #3. He talks about delaying non-pub applications in one sentence, and talks about delaying to allow standards language in a second, separate sentence.
I also thought that second sentence concerned non-pub requests, but he never actually said that. We were mistakenly reading that detail into his second sentence. He is not—in other words—moving goal posts. Rather, he was simply not as clear in his #3 as one might have hoped, and others responded to this unclear post with (predictable) misunderstanding. Now that the misunderstanding has been cleared up, however, it appears that all—both NW and his interlocutors—are correct. It really is the case that one cannot use Rule 103(d) for non-pub apps, and it really is the case that one can use Rule 103(d) to delay while one waits for standard language to be set.
What he said in the first paragraph is completely wrong. Nobody misunderstood that.
First sentence.
What he said in the first [sentence] is completely wrong.
How so? He said that “[c]ompanies do it because… it takes a while to get the product out and they don’t want the publication or allowed patent to be public until the product is out. “Do it” is not as clear as one might like, but he later clarified in #3.2.1 and 3.2.1.1.1 that by “do it” he meant “file Rule 103(c) requests.”
It is perfectly permissible to file Rule 103(c) requests for non-pub apps (go look at the conditions for paragraph (c) above). It is only Rule 103(d) where the non-pub request violates the terms of Rule 103.
Dozens correctly interprets my statements.
Not sure why there is such a high scrutiny on everything I write on this blog.
Could it be because I am pro-patent and the people that are applying high scrutiny to my posts are anti-patent?
Anyway, I explained how § 1.103 is used in practice and for that I am insulted. Breeze, you sound like a redux of MM. I am going to start ignoring you if you don’t lighten your tone.
“…but he later clarified in #3.2.1 and 3.2.1.1.1 that by ‘do it’ he meant ‘file Rule 103(c) requests.'”
Here’s what he said in 3.2.1: “I often file 37 C.F.R. 1.103(c)/(d) requests for the purposes I just said.”
“>>>Fair enough if you frequently file Rule 103(c) requests…”
Here’s what he said in 3.2.1.1.1, “Correct, and usually these are filed for products that are going to come out within a year.”
So one of the BIG SECRETS of the TOP LAW FIRMS in the country is to delay prosecution for 3 months after filing an RCE for “products that are going to come out within a year.”
Not sure why you’re wasting your time helping him move the goalposts.
Not sure why there is such a high scrutiny on everything I write on this blog.
The reason why you got a lot of pushback on this one is that your #3 was confusingly phrased. When people misinterpreted your meaning, instead of seeking politely to clarify, you roared out of the gate with a bunch of rank-pulling guff.
The whole business has been much ado about nothing, to be sure, but it would have been settled much sooner if you had begun with diplomacy instead of aggression. “Pro”-patent vs. “anti”-patent had nothing to do with it.
“… you roared out of the gate with a bunch of rank-pulling guff.”
You’re not showing much gratitude to a guy from one of THE TOP LAW FIRMS IN THE COUNTRY dispensing pearls of wisdom BIG SECRETS to you.
The “anti-patent” charge is this site’s version of “woke.” And as completely brain dead.
Greg, DC at 3.1 was just rude. Had he politely asked me to clarify, I would have.
By the way Greg, “the top law firms in the country” refers to not only me but the fact that we work with the large firms together and these issues are often worked out with many different attorneys from many law firms.
Get it? It is not me nor my law firm but the collective of many attorneys and many law firms that figured out how to handle these issues. I’ve been on a conference call with 100+ attorneys regarding prosecution matters.
The nitpicking is just ridiculous.
So you agree that you do not achieve your goal of avoiding publication! So what do youget out of delay that you would not get out out of a continuation. Maybe one less patentand the attendent cost saving
So you agree that you do not achieve your goal of avoiding publication!
No, he does not agree with that assertion. Using Rule 103(c), his clients can delay grant (and thus publication) of non-pub apps by up to three months. You are correct that they cannot use Rule 103(d) to delay for years, but they can achieve a short term delay with Rule 103(c). That appears to be all that he was discussing in the first sentence of his #3.
Greg,
Why hide the hyperlink to the Meadows texts?
“No, he does not agree with that assertion. Using Rule 103(c), his clients can delay grant (and thus publication) of non-pub apps by up to three months.”
Three months? Wow. That is most certainly a huge giant big secret. Well worth paying the top law firms in the country to get. And it only took 100+ lawyers on a phone call to come up with it. Truly earth shattering stuff.
But my comment referred to deferral. I merely pointed out that “doing it” could not include deferral. I did not mention suspension or delay generally. Referring to deferral, non-pubs are not allowed. Referring to suspensions for an RCE, non-pubs are moot unless you filed one previously, which means you didn’t file a pct, so even if you delay grant you cannot delay publication unless the app wasn’t worth a pct. (But by the time you need an rce, you are two or three years delayed anyway.). So how do you avoid publication (unless you file an rce in an app in which you skipped the pct)? And, as I understand it, you cannot add new matter in order to customize to a new standard. So how does any delay help on that front? And who needs a measly three months? And what standards body is going to adopt standards in that three month period.
Anyway, I think of this blog as a place to occasionally learn things, hear how others do things, etc., so my questions are really aimed at seeking answers. My comments are meant to piss off night writer.
But night writer said “I often file 37 C.F.R. 1.103(c)/(d) requests for the purposes I just said.” 103(d) is the deferral is referred to in my post. So maybe he was discussing both?
KDC,
Now that made it funny.
This is one of the funniest threads here in a while. So thanks for that.
I can’t say I’ve ever had a client tell me they wish that they had more time before they get an Office Action.
Maybe it makes sense for junkers that bigger companies file, so they have a few years to realize the invention is not valuable enough to warrant the expense of fully prosecuting. Is there any other reason to delay?
Start-ups need to demonstrate patentability in the short term, so they can raise money, so delaying examination is a bad idea.
Except….
> Is there any other reason to delay?
It’s a lot easer to write great claims if you can see the infringer’s actual product…
Yea, you can do the same thing with continuation practice, but that’s expensive/speculative with big portfolios.
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