February 24, 2024

Aqeeldhedhi

Law, This Is It!

Prosecution Delays and Patent Term Adjustment on the Rise Again

6 min read
Prosecution Delays and Patent Term Adjustment on the Rise Again

only about 30% of cases are receiving a first office action within the 14 months allotted by Congress. I’ll note here that the PTA does not ‘cost’ the USPTO anything in terms of up-front money and, may make it more likely that the patentee will pay the issue and back-end maintenance fees.

Several things here.

First, let’s not be glib as to that 14 months being a part of an expected deal (to Congress) in preserving the (US Sovereign) notion that the Quid Pro Quo is for a granted patent in exchange for shared (and then publicized) inventor disclosure. Decidedly, the US does not share any ROW view that the QPQ exchange is publication for a mere chance at patent rights. There is NO sense of “we get to take the quo and share what you have with your quid being you are permitted to apply for a patent.”

Such may be the deal other Sovereigns have put out there, but that is decidedly NOT the US deal.

That 14 month mark was intended to give the applicant ample time to review a first (and complete) examination result, with which to evaluate going ahead with the patent process or abandoning (with abandonment removing the ‘existence’ of the applicant’s disclosure from written history).

Second, looking at the situation as “not costing the USPTO any money” is more than crass in evaluating what Congress expected. It is a not-so-subtle way of reneging on the deal that underpins the US patent system. “Cost” may not be in dollars, but make no mistake that “cost” is indeed involved.

Third, There is no indications in any sense of facts on the record to support the assertion that NOT living up to the deal “may make it more likely that the patentee will pay the issue and back-end maintenance fees.

That statement is beyond ludicrous.

  1. 4.1

    Breeze says:

    “… (with abandonment removing the ‘existence’ of the applicant’s disclosure from written history).”

    What?

    1. 4.1.1

      anon says:

      Come now Malcolm, you are well old enough to remember that applications submitted to the Office that are abandoned prior to publication are treated as having never existed (for prior art purposes).

      Have you forgotten the phrase “provisional rejection?”

      1. 4.1.1.1

        Breeze says:

        I’m aware that under Rule 138 you can expressly abandon to avoid publication. But I can’t think of a single application that I’ve received a first OA on the merits within 14 months of filing where the OA caused me to advise a client to expressly abandon the application to avoid publication. I mean it’s an option, but not really an option. (Responding even though you misidentified me. No point in trying to disabuse you of your own certainties.)

        1. 4.1.1.1.1

          anon says:

          Well thanks for clarifying (even with snark) that you are not Malcolm.

          It’s only like the fifteenth occurrence since you posted under this moniker.

          As to whether or not a (any) client would expressly abandon with receipt of action at 14 months is quite different than understanding the legal mechanism (and underlying rationale) for doing so, eh?

          1. 4.1.1.1.1.1

            Breeze says:

            I’m well aware of the legal mechanism for doing so. I’ve never had to use it. I doubt many others have either.

            1. 4.1.1.1.1.1.1

              anon says:

              Your post at 4.1 will lead others to the opposite conclusion in regards to that “well aware of legal.”













            2. 3

              BlutoBlutarsky says:

              It’s amazing how they can ignore Congress when it benefits them.

              1. 3.1

                anon says:

                Yes (sadly), the Executive Branch disregarding its primary duty of enforcing the law (and read that as also including selective — and political based — enforcing) is one of our greatest shortcomings of this modern era.

                And it certainly does not help that Mainstream Media is complicit in this.



              2. 2

                Breeze says:

                One way to get the PTO to take PTA seriously would be to give it to patentees upfront. So, for example, if you get 3 years of PTA, your first maintenance fee wouldn’t be due for 6 years.

                1. 2.1

                  anon says:

                  Bravo.

                  Malcolm (as Breeze) actually has a worthwhile suggestion. We all should applaud small steps such as this.

                2. 2.2

                  OldCurmudgeon says:

                  tbh, I think my clients would be better off with deferred examination (i.e., the ability to defer examination fees).

                  As a lawyer, OTOH, I’m outraged by these delays in my ability to collect fees.



                3. 1

                  Ben says:

                  “I’ll note here that the PTA does not ‘cost’ the USPTO anything in terms of up-front money and, may make it more likely that the patentee will pay the issue and back-end maintenance fees.”

                  What is the point of this statement? If it’s to suggest the PTO is indifferent to PTA, I would disagree. While the PTO as an entity is not penalized by PTA, individuals in PTO management have bonus opportunities tied to PTA.

                  1. 1.1

                    Dvan says:

                    Ben, would you please explain more about how the PTO management bonus opportunities are tied to the PTA. That is definitely an issue I had not heard about in the past. Thanks.

                    1. 1.1.1

                      anon says:

                      I find it sad that this type of thing has to be asked for, and is not openly available to the public.

                    2. 1.1.2

                      Ben says:

                      I honestly don’t know the details of their bonus structure, sorry.

                      1. 1.1.2.1

                        anon says:

                        You “honestly don’t know” but are perfectly willing to assert details that you “honestly don’t know”…

                        It is just so difficult to believe that you are an examiner….












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