by Dennis Crouch
On January 23, 2024, the Federal Circuit granted the USPTO’s request for a remand in the case of In re Xencor, Inc. The appeal focused on two important issues concerning written description requirements for means-plus-function (MPF) and Jepson claims in the context of antibody patents. The USPTO had indicated that it wanted to reconsider its approach to these issues and convene its newly established Appeals Review Panel (ARP) to clarify its position. (ARP is the new POP). As part of its justification for remand, the Federal Circuit noted its expectation “that proceedings will be conducted expeditiously.”
However, more than two months after the remand order, there has been no visible progress in the case. The USPTO has not docketed the case with the ARP, and no public announcement has been made regarding the composition of the panel that will review the case. Furthermore, the prosecution history of the application in question (USPTO Application Number 16/803,690) does not reflect any updates or changes since the remand.
This lack of action is particularly concerning given the significance of the issues at stake. The PTAB previously made two controversial rulings that were on appeal: (1) that under 35 U.S.C. 112(f) equivalents require explicit written description support and (2) that non-limiting Jepson claim preambles also require such support, even if they do not limit claim scope.
Meanwhile, the USPTO did recently issue examination guidance on examining means-plus-function claim limitations under 112(f). The troubling aspect of the memo, however, is that it does not provide any guidance on the Xencor enablement issue.
Citations:
[1] https://patentlyo.com/patent/2023/12/motion-remand-xencor.html
[2] https://patentlyo.com/patent/2024/01/important-antibody-description.html
[3] https://cafc.uscourts.gov/01-23-2024-23-2048-in-re-xencor-inc-order-23-2048-order-1-23-2024_2257719/
What was “POP”?
There is nothing to stop the USPTO from failure to act on an application in a timely manner. The only consequence that I am aware of is that the Applicant gets patent term extension. However, no negative consequence to the Examiner, the SPE, the TC Director, etc. Do Examiners still get negative workflow for not acting on a application within a certain time or has that been done away with?
Great question, IP Guy! While the USPTO patent examiners’ performance and appraisal plan (PAP) does provide docket management and pendency goals that incentivize speedy turnaround times, it is important to note that performance is largely based on an average. From what I understand, examiners face no repercussions for slow walking one application as long as they quickly sign off on enough other cases to meet their aggregate goals. Plus the fake SPE employee named Central Docket has that habit of restarting the docket clocks by repeatedly assigning and reassigning applications to examiners to keep their apparent pendency numbers low.
The assigning and reassigning cases is due to cases being misdocketed as a result of misclassification by the contractors. When a semiconductor examiner, for example, gets docketed a misclassified case drawn to tires, the examiner does a classification challenge that sends the case back to the Central Docket. Iancu and Hershberg’s case routing system is responsible for what you are seeing.
thank you, Matilda, for sharing that behind the scenes info about misclassification of patent applications. While I can see how that explains repeated redocketing of the new applications, it seems odd that Central Docket repeatedly goes through the motion of re-assigning some amended applications back to the same examiner who prepared the first Office action on the merits.
The word “sham” comes to mind.
Certainly, “A” reason may be available, but taking a closer look, how often should that type of error even happen in the first place?
“Do Examiners still get negative workflow for not acting on a application within a certain time or has that been done away with?”
It has not been done away with.
But with high examiner attrition and a steadily growing backlog, I would not be surprised if management were more forgiving of marginal workflow performance.
As bad as you all think examiners are today, how do you think it’s going to be when inflation erodes another 10% of pay?
Hi Ben- I think the vast majority of patent examiners are talented, diligent, extremely hard working professionals trying their best, under enormous, constant, conflicting pressures, to correctly review and examine patent applications.
IP practitioners and patent examiners all deserve substantially better IT tools and process improvements. We deserve significantly more actual responsiveness from USPTO management/leadership.
Sharing glossy photo ops, creating new affinity groups and spewing sound bites – “we are listening! – are not sufficient to fix our broken IP system.
We are watching.
Anecdotally, my experience over the course of more than a decade is about 60/40 “good” to “bad.”
Of course, the binary is closer to a spectrum, in which I have simply applied an “Is this acceptable to me” as a dividing line.
Mileage may vary.
Is anyone really shocked by the Patent Office here?
Giving it the Gilbert Hyatt treatment, apparently.
Good post. Never hurts to light a little fire under the powers that be.
If you think that the “powers that be” at the PTO give a rat’s behind about this post on this blog, I have some awesome beach front property in Nebraska I would love to sell you.
Again, it doesn’t hurt. And it’s a known fact that information travels in unexpected ways. Lots of people read this blog and the comments, especially if they are searching for views or discussion on a particular issue.
Not to mention that it is likely scraped for AI ingestion.