Tuesday, December 11, 2007

Applicants Question PTO's Focus on "Compact Prosecution" In Upcoming Reform Measures

One of the most important aspects of patent prosecution and application pendency is the the concept of "compact prosecution", which is described in MPEP § 2106(II):

It is essential that patent applicants obtain a prompt yet complete examination of their applications. Under the principles of compact prosecution, each claim should be reviewed for compliance with every statutory requirement for patentability in the initial review of the application, even if one or more claims are found to be deficient with respect to some statutory requirement. Thus, USPTO personnel should state all reasons and bases for rejecting claims in the first Office action. Deficiencies should be explained clearly, particularly when they serve as a basis for a rejection. Whenever practicable, USPTO personnel should indicate how rejections may be overcome and how problems may be resolved. A failure to follow this approach can lead to unnecessary delays in the prosecution of the application.
In the recently-proposed changes to BPAI practice, the PTO received a fair number of comments (link) that were negative towards the proposed rules. One of the biggest sticking points for applicants was the perceived lack of quid-pro-quo on the burdens imposed on applicants versus examiners.

While appeals provide for a variety of different outcomes, the most often outcome (including pre-appeal brief activity) is the reopening of prosecution. In effect, the reopening of prosecution grants a "mulligan" to the examiner on a bad rejection, and leaves the door open for further rejections. This, according to one comment, is a big problem:

The Proposed Rules fail to address several factors which unduly prolong patent prosecution. These factors include repeated reopening of prosecution by the examiner after an appeal brief is filed, as well as after a decision by the Board in which all of the original rejections presented by the examiner were reversed. Such repetitive reopening of prosecution has the effect of preventing judicial review of agency action. Such repetitive reopening of prosecution is also contrary to fundamental legal principle that an administrative agency cannot avoid review of its actions by continuously keeping open activity which prevents judicial review.
As evidence, the commentator pointed to application no. 09/077,337 as a classic example of abuse. The history of the application is as follows:

02/17/00 - 1st non-final rejection.
04/24/01 - Restriction.
06/19/01 - 2nd non-final rejection.
09/18/01 - 1st Appeal Brief.
01/31/02 - 3rd non-final rejection.
03/11/02 - 2nd Appeal Brief.
10/01/02 - 1st Suspension.
06/17/03 - 4th non-final rejection.
07/15/03 - 5 th non-final rejection.
09/19/03 - 3rd Appeal Brief.
11/29/05 - BPAI decision - Examiner reversed.
02/08/06 - 2nd Suspension.
04/25/07 - Request for information under 37 CFR § 1.105.
At wit's end, the Applicant commented in the latest response with the following:

As evidenced by the extraordinary amount of prosecution carried out by the Office, it appears that the Office had long ago internally decided that this application was never to mature into a patent. Thus, as the Office's illegal withholding of application allowance is expected to continue, the Office will predictably not be satisfied no matter how Applicants respond to the current Request for information.
View the response in its entirety here (link)

See 09/077,337 image file wrapper here (link)

While this application appears to be a more extreme case, other Applicants have shared this frustration over "reopening abuse."

See Joe Butscher, "Pre-Appeal Brief Panels Should Allow More Applications Rather Than Reopening Prosecution" IP Today, July 2007 (link)

5 Comentários:

Anonymous said...

Note that the SPE is behind this:

Alexander Kalinowski

Have a rotten Christmas USPTO!

JohnG

Erin-Michael Gill said...

Just posted a long reply here:

emgill.blogspot.com

Thanks,
Erin-Michael

Anonymous said...

Peter- here are the related applications to 09/077,337. Perhaps the applicant is reaping what it has sown? (I am unfamiliar with these cases, but it seems the sheer volume of filings may not be warranted. I believe the USPTO has shut down the the issuance of patents to Gilbert P. Hyatt in similar manner. Can we really say one party is right and one is wrong in these cases, or are they both wrong perhaps?)

Child Continuity Data
09/193,647 filed on 11-17-1998 which is Patented claims the benefit of 09/077,337
09/193,791 filed on 11-17-1998 which is Patented claims the benefit of 09/077,337
10/223,693 filed on 08-19-2002 which is Patented claims the benefit of 09/077,337
10/305,083 filed on 11-25-2002 which is Patented claims the benefit of 09/077,337
10/390,586 filed on 03-17-2003 which is Patented claims the benefit of 09/077,337
11/003,791 filed on 12-03-2004 which is Pending claims the benefit of 09/077,337
11/003,821 filed on 12-03-2004 which is Pending claims the benefit of 09/077,337
11/048,345 filed on 01-31-2005 which is Pending claims the benefit of 09/077,337
11/099,369 filed on 04-04-2005 which is Pending claims the benefit of 09/077,337
11/125,518 filed on 05-09-2005 which is Pending claims the benefit of 09/077,337
11/179,457 filed on 07-11-2005 which is Pending claims the benefit of 09/077,337
11/203,488 filed on 08-12-2005 which is Pending claims the benefit of 09/077,337
11/226,104 filed on 09-14-2005 which is Pending claims the benefit of 09/077,337
11/226,540 filed on 09-14-2005 which is Pending claims the benefit of 09/077,337
11/270,392 filed on 11-08-2005 which is Pending claims the benefit of 09/077,337
11/356,818 filed on 02-17-2006 which is Patented claims the benefit of 09/077,337
11/601,556 filed on 11-17-2006 which is Pending claims the benefit of 09/077,337
11/732,861 filed on 04-05-2007 which is Pending claims the benefit of 09/077,337

Child Continuity Data
09/193,647 filed on 11-17-1998 which is Patented claims the benefit of PCT/US97/21422
09/193,791 filed on 11-17-1998 which is Patented claims the benefit of PCT/US97/21422
09/578,291 filed on 05-25-2000 which is Pending claims the benefit of PCT/US97/21422
09/638,848 filed on 08-14-2000 which is Patented claims the benefit of PCT/US97/21422
10/126,140 filed on 04-19-2002 which is Patented claims the benefit of PCT/US97/21422
10/223,693 filed on 08-19-2002 which is Patented claims the benefit of PCT/US97/21422
10/226,193 filed on 08-21-2002 which is Patented claims the benefit of PCT/US97/21422
10/305,083 filed on 11-25-2002 which is Patented claims the benefit of PCT/US97/21422
10/356,849 filed on 02-03-2003 which is Pending claims the benefit of PCT/US97/21422
10/357,145 filed on 02-03-2003 which is Pending claims the benefit of PCT/US97/21422
10/390,586 filed on 03-17-2003 which is Patented claims the benefit of PCT/US97/21422
10/430,123 filed on 05-05-2003 which is Pending claims the benefit of PCT/US97/21422
10/738,756 filed on 12-17-2003 which is Patented claims the benefit of PCT/US97/21422
10/754,367 filed on 01-09-2004 which is Pending claims the benefit of PCT/US97/21422
10/936,242 filed on 09-07-2004 which is Pending claims the benefit of PCT/US97/21422
10/957,287 filed on 09-30-2004 which is Pending claims the benefit of PCT/US97/21422
10/980,209 filed on 11-02-2004 which is Pending claims the benefit of PCT/US97/21422
10/980,345 filed on 11-02-2004 which is Patented claims the benefit of PCT/US97/21422
10/990,334 filed on 11-16-2004 which is Pending claims the benefit of PCT/US97/21422
11/003,791 filed on 12-03-2004 which is Pending claims the benefit of PCT/US97/21422
11/003,821 filed on 12-03-2004 which is Pending claims the benefit of PCT/US97/21422
11/033,601 filed on 01-12-2005 which is Pending claims the benefit of PCT/US97/21422
11/048,345 filed on 01-31-2005 which is Pending claims the benefit of PCT/US97/21422
11/099,369 filed on 04-04-2005 which is Pending claims the benefit of PCT/US97/21422
11/123,654 filed on 05-06-2005 which is Pending claims the benefit of PCT/US97/21422
11/125,518 filed on 05-09-2005 which is Pending claims the benefit of PCT/US97/21422
11/135,948 filed on 05-23-2005 which is Pending claims the benefit of PCT/US97/21422
11/179,457 filed on 07-11-2005 which is Pending claims the benefit of PCT/US97/21422
11/203,488 filed on 08-12-2005 which is Pending claims the benefit of PCT/US97/21422
11/226,104 filed on 09-14-2005 which is Pending claims the benefit of PCT/US97/21422
11/226,540 filed on 09-14-2005 which is Pending claims the benefit of PCT/US97/21422
11/270,392 filed on 11-08-2005 which is Pending claims the benefit of PCT/US97/21422
11/356,818 filed on 02-17-2006 which is Patented claims the benefit of PCT/US97/21422
11/601,556 filed on 11-17-2006 which is Pending claims the benefit of PCT/US97/21422
11/732,861 filed on 04-05-2007 which is Pending claims the benefit of PCT/US97/21422

Child Continuity Data
09/193,564 filed on 11-17-1998 which is Pending claims the benefit of 60/031,956
09/193,565 filed on 11-17-1998 which is Patented claims the benefit of 60/031,956
09/193,623 filed on 11-17-1998 which is Patented claims the benefit of 60/031,956
09/193,624 filed on 11-17-1998 which is Patented claims the benefit of 60/031,956
09/193,627 filed on 11-17-1998 which is Patented claims the benefit of 60/031,956
09/193,634 filed on 11-17-1998 which is Patented claims the benefit of 60/031,956
09/193,635 filed on 11-17-1998 which is Patented claims the benefit of 60/031,956
09/193,637 filed on 11-17-1998 which is Patented claims the benefit of 60/031,956
09/193,638 filed on 11-17-1998 which is Patented claims the benefit of 60/031,956
09/193,646 filed on 11-17-1998 which is Patented claims the benefit of 60/031,956
09/193,647 filed on 11-17-1998 which is Patented claims the benefit of 60/031,956
09/193,662 filed on 11-17-1998 which is Patented claims the benefit of 60/031,956
09/193,787 filed on 11-17-1998 which is Pending claims the benefit of 60/031,956
09/193,791 filed on 11-17-1998 which is Patented claims the benefit of 60/031,956
09/578,291 filed on 05-25-2000 which is Pending claims the benefit of 60/031,956
09/578,312 filed on 05-25-2000 which is Patented claims the benefit of 60/031,956
09/638,847 filed on 08-14-2000 which is Patented claims the benefit of 60/031,956
09/638,848 filed on 08-14-2000 which is Patented claims the benefit of 60/031,956
09/639,310 filed on 08-14-2000 which is Pending claims the benefit of 60/031,956
09/863,911 filed on 05-23-2001 which is Pending claims the benefit of 60/031,956
09/949,283 filed on 09-07-2001 which is Patented claims the benefit of 60/031,956
09/972,400 filed on 10-05-2001 which is Pending claims the benefit of 60/031,956
10/126,140 filed on 04-19-2002 which is Patented claims the benefit of 60/031,956
10/223,693 filed on 08-19-2002 which is Patented claims the benefit of 60/031,956
10/226,193 filed on 08-21-2002 which is Patented claims the benefit of 60/031,956
10/305,083 filed on 11-25-2002 which is Patented claims the benefit of 60/031,956
10/356,849 filed on 02-03-2003 which is Pending claims the benefit of 60/031,956
10/357,145 filed on 02-03-2003 which is Pending claims the benefit of 60/031,956
10/390,586 filed on 03-17-2003 which is Patented claims the benefit of 60/031,956
10/430,123 filed on 05-05-2003 which is Pending claims the benefit of 60/031,956
10/738,756 filed on 12-17-2003 which is Patented claims the benefit of 60/031,956
10/754,367 filed on 01-09-2004 which is Pending claims the benefit of 60/031,956
10/936,242 filed on 09-07-2004 which is Pending claims the benefit of 60/031,956
10/957,287 filed on 09-30-2004 which is Pending claims the benefit of 60/031,956
10/980,209 filed on 11-02-2004 which is Pending claims the benefit of 60/031,956
10/980,345 filed on 11-02-2004 which is Patented claims the benefit of 60/031,956
10/990,334 filed on 11-16-2004 which is Pending claims the benefit of 60/031,956
11/003,791 filed on 12-03-2004 which is Pending claims the benefit of 60/031,956
11/003,821 filed on 12-03-2004 which is Pending claims the benefit of 60/031,956
11/033,601 filed on 01-12-2005 which is Pending claims the benefit of 60/031,956
11/048,345 filed on 01-31-2005 which is Pending claims the benefit of 60/031,956
11/099,369 filed on 04-04-2005 which is Pending claims the benefit of 60/031,956
11/123,654 filed on 05-06-2005 which is Pending claims the benefit of 60/031,956
11/125,518 filed on 05-09-2005 which is Pending claims the benefit of 60/031,956
11/135,948 filed on 05-23-2005 which is Pending claims the benefit of 60/031,956
11/179,457 filed on 07-11-2005 which is Pending claims the benefit of 60/031,956
11/203,488 filed on 08-12-2005 which is Pending claims the benefit of 60/031,956
11/226,104 filed on 09-14-2005 which is Pending claims the benefit of 60/031,956
11/226,540 filed on 09-14-2005 which is Pending claims the benefit of 60/031,956
11/270,392 filed on 11-08-2005 which is Pending claims the benefit of 60/031,956
11/356,818 filed on 02-17-2006 which is Patented claims the benefit of 60/031,956
11/601,556 filed on 11-17-2006 which is Pending claims the benefit of 60/031,956
11/732,861 filed on 04-05-2007 which is Pending claims the benefit of 60/031,956
PCT/US97/21422 filed on 11-25-1997 which is Pending claims the benefit of 60/031,956

JD said...

Yes, we can say who is wrong. And it's the PTO.

What does the child continuity data have to do with whether the PTO is obeying the law in the handling of 09/077,337? 09/077,337 is the NP of a PCT. In other words, it is the first case in the series. Why won't the PTO issue it? What relevance does the number of cases that claim priority to 09/077,337 have to do with whether the claims in 09/077,337 are patentable?

This application is a prime example of why the entire management of the PTO needs to be replaced. They have absolutely no regard for the law. Get rid of them.

JD

Michael Kondoudis said...

I agree that this is one of the most important principles of U.S. practice and one of the most abused by the PTO. The new rules package will likely empower examiners to abuse it further.

We all have horror stories on this subject. The PTO focuses on compact prosecution only when it is too their advantage. After facing it a few too many times, I began proactively asserting it in prosecution. For those who are interested, I posted a discussion of this on my blog http://patentablydefined.com/?p=18.

DISCLAIMER

This Blog/Web Site ("Blog") is for educational purposes only and is not legal advice. Use of the Blog does not create any attorney-client relationship between you and Peter Zura or his firm. Persons requiring legal advice should contact a licensed attorney in your state. Any comment posted on the Blog can be read by any Blog visitor; do not post confidential or sensitive information. Any links from another site to the Blog are beyond the control of Peter Zura and does not convey his, or his past or present employer(s) approval, support, endorsement or any relationship to any site or organization.

The 271 Patent Blog © 2008. Template by Dicas Blogger.

TOPO