Live comments on PTO Presentation on Continuation Changes

Live comments on PTO Presentation on Continuation Changes

• http://webexcomm.vo.llnwd.net/o16/usptolive823/


• http://www.uspto.gov/web/offices/pac/dapp/opla/presentation/ccfrslides.ppt

A recorded version of today’s seminar will be available at the PTO website by Monday, August 27, 2007.

Comments

[LGB]

I'm listening to the "webinar" now, and it is,so far, a huge waste of time. He is just reading the slides, with no elaboration. I already read the slides - I need to hear answers to questions. The only difference between just reading the slides ahead of time and listening to this webcast, is that some other guy is asking a question to introduce the slide, and then Baher answers by reading from the slides. I wish they would please stop and answer questions.

[NL]

I agree wholeheartedly - all he's doing is basically reading the slides.

I've already submitted three questions. We'll see how many they get to.

On a positive note, they're reading the slides fairly quickly, so I guess they're planning on spending a LOT of time on questions (we're only about 30 minutes into a 2 hour presentation!)

[LGB]

I was thinking the same thing - it is going pretty quickly. I submitted a question right before the webcast, so we'll see. My question addresses the effect of a continuing design application claiming priority of a utility application (all filed before 8/21/07) -how does it affect the ability to file continuations on the utility applications? I emailed this question yesterday, and the only reply was that the rules apply to all app's filed under Sec. 111(a) - I don't think my question was understood. And I don't think they thought through this particular situation.

[metoo]

LOL - did you intentionally try to come up with a question that would stump them, LGB? Yes, it is definitely a legitimate question. And what about the common situation where you file multiple design patent applications covering different design elements of an article? It would appear that the rules apply to design patent apps, but was that intended?

[Just an ordinary inventor(TM)]

Is it pre-recorded? It might as well have been so far.

[metoo]

Good grief - this webinar is a complete joke.

[Points to Ponder]

Wow, a two-hour infomercial for the need for litigation.

Gosh this is complicated. I wonder if Ms. Peterlin, who won so much praise at the beginning of the presentation, could go over it again and explain it a little more clearly.

[steve]

I agree that the moderator/presentor format blows.

[NL]

Only about 20 pages to go ... We should have about an hour for questions. Hopefully it will start to get more interesting shortly ...

[Alex]

This is awful. They are about as dry as can be, and they are basically reading the statute, without much explanation. And I hate the guy that asks the questions, I wish him harm.

[David Barman]

Very good compliance with Administrative Procedures Act.
Notice and Comment Rule Proposed, 500+ comments, ignoring the huge opposition, and implementing the rules anyway. Very nice PTO.

N.B. to "Points to Ponder" I would love to hear Ms Peterlin explain this....I could use the entertainment.

[lgb]

Metoo - Unfortunately, it is not a hypo but a real situation for me. Not only that, I have 3 pending utility applications with design application claiming their benefit (some of the design applications have issued or been allowed)that have well over 5 ind. and 25 total claims - I may be fortunate enough in the first to get an FAOM, but oh no, not so, for the other 2.

[Steve]

Re: Peterlin....they could easily get her to explain it. How do half these judges get confirmed? They are grilled until they can spout details in their sleep.

[language nut]

Anyone else notice that Ms. Peterlin read her carefully prepared opening statement and finished with something to the effect "hope yall enjoy." Don't know why that "yall" thing bugged me so much but, gosh...

[Steve]

I thought I was hearing things about the "yall".

[Just an ordinary inventor(TM)]

I just can't force myself to listen anymore.
As they said in the Army, "'smoke' 'em if you got 'em."
For me, I'm going for a wet lunch.

[Just an ordinary inventor(TM)]

It sounds like the questions/answers were pre-selected, like on the "$64K Question" a few decades ago.

[language nut]

I get that feeling too - sounds like he's reading off slides we can't see...

[patent leather]

Here is the question I submitted:

"How will the Office handle a refused benefit claim made while the rules are in effect once the rules are overturned in court?"

Wonder why they aren't answering it?

[NL]

I don't think they've answered ANY of my five questions yet ...

[metoo]

Does anyone else see this? I'm using Firefox, and in the left hand box of the pop-up window, beneath the audio controls, it has the following: 8/23/2007 9:00:03 AM Hmmmm....does that mean this entire audio stream was created this morning (i.e., is not live)??? Yet, the same window has a button for e-mailing the presenter.

[language nut]

I think that's when the site was put up...

[Inquiring Mind]

Gee, I wonder why they completely ducked the question about what is required for a showing?

[lgb]

metoo - the time may be when the page was launched - I was able to log in about 10 minutes before the webcast.

Although I just heard a question that is clearly in the FAQ, so I'm wondering if these are truly questions posted from attorneys or the PTO.

[lgb]

inquiring mind - b/c they don't know and are probably betting no one will file one.
I'm having buffering issues and missing some of the Q&A - if they answer my design patent question, would someone post it here?

[language nut]

I wonder if they are reading these comments while answering questions?

[EvilDave]

He mentioned a FAQ on the web page.
Anyone have a URL for this?

[Mr. T]

I wonder if they are reading these comments while answering questions?

Posted by: language nut | Aug 23, 2007 at 02:26 PM
---------
Mr. Barr, tf you are, EAT ME!

[language nut]

Long pause after the eat me comment...

[srb]

http://www.uspto.gov/web/offices/pac/dapp/opla/presentation/ccfrfaq.pdf
for the faqs

[EvilDave]

Thanks for the URL

[lgb]

I cannot believe I'm losing the connection - I sat through an hour of nonsense, reading from slides, and now I can't hear the q&A. I guess I'll have to listen to it again on monday.

[metoo]

Yes, LGB, you are missing some incredibly insightful comments - like how copendency under 35 USC 120 requires an application be pending before the other case actually issues (i.e., copendency does not end when a notice of allowance issues). Wow - who would have thunk.

[al einstein]

Dear Mr. Dudas,
Will you testify for me in my inequitable conduct case when I can't get a piece of relevant art in front of the patent office simply becuase I ran out of my one RCE? If not, can I live in one of the PTO's conference room?

[RCE]

Scenario:

1 RCE filed, first action issued, applicant amended, Examiner finds new art and issues final rejection (necessitated by applicant's amendment), you decide that an amendment is more proper than an appeal (i.e., the appeal is not ripe based on the new art cited) ...

Question:

shouldn't the "showing" needed to justify the second RCE be pretty easy to make? you should just have to say that you couldn't have presented the new arguments and/or claim amendments based on art that you never saw before.

[language nut]

OH MY GOD THEY ARE READING THE QUESTION AND ANSWERES FROM THE .PDF!!!!!!

[lgb]

Is anyone still listening to this webcast?

[listeninggggg]

Ms. Peterlin read an introduction, which was then repeated verbatim by Bahr, then she totally disappeared. . . Is that probative in Aharonian's suit?

[metoo]

LOL - Question: Can you file as many continuations as you want before Nov. 1?
{incredibly long and uncomfortable pause}
short answer - yes, but you lose the right to file one after Nov. 1

[lgb]

metoo- good, sounds like I'm not missing much. :-) Let me know if design patents come up. I just saw a post that they are reading from the FAQ pdf file - I thought I remembered one of those questions.

[Pat Buchannnanan]

Screw the courts, break out the pitchforks and torches!

[metoo]

what about the common scenario in which you previously received a final OA which was improper, yet you chose to file an RCE rather than petitioning. would that be enough of a justification for another RCE in the same family?

[RCE with ESD]

einstein
They're not saying that you couldn't file that RCE, just that you'd need to file an ESD as well (if they didn't buy your showing).

[metoo]

I'll try lgb, but I'm having trouble staying awake right now

[lgb]

metoo - I think you are only allowed one more continuation before Nov. 1, provided you filed more than 1 prior to aug. 21 in a pre-aug 21 application? That is what the slide shows, if I'm understanding it correctly.

[Just an ordinary inventor(TM)]

I recall the producers of the "$64K Question" got into Dutch for a phony "live" spontaneous broadcast. Shouldn’t the PTO be held to an even higher standard?

[EvilDave]

language nut :
You noticed that too, huh?

[BG]

What is this different requirement for SMALL ENTITY? Where is the formal definition published? I don't think it helps any real, for-profit companies...

[metoo]

lgb - I'm pretty certain you can file as many continuations and CIPs you want before Nov. 1. After Nov. 1, in every "family" in which no pending cont or CIP application claims priority to an app filed after Aug. 21, you get one more continuation or CIP (regardless of how many pre 8/21 apps are in that family). They did that to try their best to cut down on cont and CIP filings between now and Nov. 1

[lgb]

I can't speak for applications filed post Aug. 21, but I suspect for applications filed before Aug. 21, esp. those with FAOM and continuations/rce's in place, it should not be too difficult to come up with good reasons to file a second or third. Besides, the petition fee is $400 - for that money, you'd think they would grant it if the arguments are reasonable.

[language nut]

It seems they should have specifically ignored the written FAQ's to answer e-mailed questions. My goodness...

[NL]

This is funny ... this last question is found VERBATIM in the FAQ at E4 (i.e. automatic granting of petition)!

[Mickey]

Does anyone know of any marinas for sale?

[EvilDave]

The common owner requirement is death for portfolio work. How is Firm A supposed to know when Firm B files an application for your joint-client MegaCorp and what that application entails?
The only person with knowledge of both is MegaCorp. And, if they don't tell you, you have problems. Probably inequitable conduct problems.

[lgb]

metoo - you are probably right.

[metoo]

LGB - as I suspected, your question about design apps was just too tough for them to handle.

[lgb]

Now I get the good connection - in time for concluding remarks!

[Just an ordinary inventor(TM)]

The best part was the music after they shut up.

[aeinstein]

metoo - they asked the question and they said no additional RCEs for IDSs. period. didn't hear anything about ESDs regarding RCEs

[metoo]

my favorite part of the webinar? the haunting music at the end. sounded like a funeral dirge - what a nice touch by the PTO

[language nut]

And so it ends...

[Alun Palmer]

Can anyone identify the closing music? Slow cadence, minor key, IOW some form of lament, LOL!

[metoo]

aeinstein - I don't follow - I didn't ask any question like that

[lgb]

metoo - well, I guess the answer is that design app's are treated the same, even in the scenario I presented, albeit that was not an intention.

[lgb]

I assume for pending applications (prior to Aug. 21) for which no FAOM has issued prior to Nov. 1, that they will wait until after Nov. 1 before issuing any notices in the event you have a 5/25 issue. I'm going to file an election tonight via fax, and I'm thinking I might receive an FAOM before Nov. 1 (unless the examiner sits on it). If I receive the FAOM prior to Nov. 1, then I should be fine, and any rejoined species claims should not require an esd, even if they cause the appln to exceed 5/25. Does that make sense?

[PO]

Does anyone have any idea how much an ESD will cost the client? (probally more than the original app). How about the pricing for the search?

[PO]

Well the mental giants at the PTO sure have made a bigger mess of the system. They should have addressed the problem not treated the symptom. Looks like they are trying to reduce the number of filings, yeah thats it! Punish the applicant instead of hiring more competent examiners....God help us now!

[Mr. T]

I see an ESD (aka the Document of Doom) costing about as much as an opinion. That is, very expensive!!

They might be giants, but not mental giants!

I hear your pleas bro-ther, but God doesn't give a damn!

[Malcolm Mooney]

As noted by Kevin Noonan over at patentdocs, the worst of the proposed rules for biotech practitioners fell by the wayside. That is, we aren't required to file all the divisionals before the original application issues. Whoever came up with that proposed rule should be slapped.

Anyway, I thought I'd give us an opportunity to focus on "the positive side" of things.

[MeAnonToo]

metoo-

short answer: no.

[MeAnonToo]

EvilDave-

I thought about that problem too. There's going to have to be some client counseling about this topic, and how they hand out work to outside counsel is going to have to change.

I'm sure they'll be glad to hear that.

[NL]

Question for everyone (in view of the very enlightening presentation):

If I filed a case in 2006 that disclosed multiple inventions (let's say 5, for example) but only claimed 1 (with the intention of filing multiple continuations but not having sufficient cash flow at the time), what is the best strategy going forward?

I can file 5 continuations now, before Nov. 1. However, the problem there is that all of these apps will be part of one big happy 'family', so if I file an RCE in ANY of these cases, I will no longer have that option for any other cases.

Another option is to file a cotinuation claiming 5 different inventions and suggesting a restriction. Then, if the Examiner agrees, I can file 5 divisional applications, each of which can have their own RCE and their own 2 continuation. Thus, this would seem like the preferred strategy.

Now, what if the situation is further complicated by a pending PCT application? I could enter the US via the National Stage and then get 2 more continuations.

Any thoughts?

[questioner]

Another question: there was a quick reference to bypass applications in the Q&A, and now I'm trying to parse the rules (starting on 46733). Am I reading it right to mean that if after November 1, I have both a PCT application and a US nonprovisional pending, both of which just claim priority to a provisional application, I could file one additional ESD-free continuation by filing it as a bypass off the PCT?

[metoo]

NL - your best option may be to drink heavily and root for the folks at Kelley Drye. I have already undertaken the first of my suggestions (well, not literally, but I do feel very hungover after that webinar).

[metoo]

questioner - I don't see how what you propose has any bearing on whether or not you will need an ESD.

[questioner]

metoo,
I'm trying to understand whether this, on page 46750,

"Under § 1.78(d)(1)(iv), if a Demand has not been filed and the basic national fee has not been paid in the international application, and the international application does not claim the benefit of any other nonprovisional application or international application designating the United States of America, the applicant may file ‘‘one more’’ continuation application (or continuation-in-part application) of such international application without there being a requirement for a petition and showing under § 1.78(d)(1)(vi)."

provides for an extra continuation. I'm relatively new at this game, so apologies if the question's still nonsense.

[Alan McDonald]

"The common owner requirement is death for portfolio work. How is Firm A supposed to know when Firm B files an application for your joint-client MegaCorp and what that application entails?
The only person with knowledge of both is MegaCorp. And, if they don't tell you, you have problems. Probably inequitable conduct problems."

I actually submitted that question during the presentation, but they never answered it.

[questioner]

metoo,
Sorry, I just caught my mistake. I should have said, "without a showing", rather than referring to an ESD.

[metoo]

Yes, I believe you can get an additional continuation using the PCT bypass approach. Whether or not you will need an ESD, however, depends solely on the number of claims in the application (assuming no office action on the merits prior to Nov. 1).

[Malcolm Mooney]

Here's a question for the peanut gallery: if a patent that is part of a large family issues in 2010 and the patentee sues Y, under the present rules will Y be able (in theory) to count up the continuations or whatever and -- if it's the case that one of these rules was "broken" during prosecution -- invalidate the patent on those grounds?

[Malcolm Mooney]

"How is Firm A supposed to know when Firm B files an application for your joint-client MegaCorp and what that application entails? The only person with knowledge of both is MegaCorp. And, if they don't tell you, you have problems."

That's true under the present rules as well.

[real anonymous]

Malcolm, I think the standard today would be that the Director has the power to waive (or not apply may be a better term) any rule, and the issuance of the patent (coupled with the presumption of validity) would indicate waiver. But I could be wrong.

[SF]

"Here's a question for the peanut gallery: if a patent that is part of a large family issues in 2010 and the patentee sues Y, under the present rules will Y be able (in theory) to count up the continuations or whatever and -- if it's the case that one of these rules was "broken" during prosecution -- invalidate the patent on those grounds?"

Is this question posed to the "peanut gallery" that occasionally posts here, or all of us? ... anyways ...

Great question. Since there's no statutory basis for denying the priority claim, I don't think there is any way to breaking the chain of priority. However, I would expect inequitable conduct allegations for failing to let the USPTO of its mistake.

[SF]

"for failing to let the USPTO *know* of its mistake"

[Tommy]

So... Ya file an application with 3 independent claims and 17 dependents all nicey nice within 5/25. You prosecute... eventually your get a final office action. All the dependents are allowed. All the independents are rejected. All the dependents depend directly from an independent. To get the broadest coverage without appeal you have to

Place 17 claims in independent form and cancel the independent claims...sigh, ok ya do it...

Now you have to file an ESD for violating 5/25? The Examiners search isn't good enough? I have to do it all again? That makes as much sense as having to pay 17 Independent claim fees....

[real anonymous]

"Now you have to file an ESD for violating 5/25?"

No! You *can't* file an ESD after a FAOM. My understanding is you need to file a continuation with an ESD and 17 independent claims, or choose to place just 5 of the dependent claims in independent form.

Unfortunately, the scenarios for non-elected dependent claims (over 25) which depend from allowed independent claims get even worse.

[SF]

Malcolm: I was thinking litigation. Try re-exam and point out the break in the chain. I think that might work.

[JM]

35 u.s.c. 132 says, "The Director shall prescribe regulations to provide for the continued examination of applications for patent at the request of the applicant."

Doesn't "to provide for... at the request of the applicant" imply that the USPTO cannot refuse to continue examination? Anyone know what the legislative history says about this?

[Points to Ponder]

Answer to SF -

After a patent issues, and with the exception of inequitable conduct issues, the validity of a patent is not open to collateral attack based on technical deficiencies in administrative procedure. Exxon Corp. v. Phillips Petroleum Co., 265 F.3d 1249, 1253-54, 60 USPQ2d 1368, 1371 (Fed. Cir. 2001); Magnivision, Inc. v. The Bonneau Co., 115 F.3d 956, 960, 42 USPQ2d 1925, 1929 (Fed. Cir. 1997) (“Procedural lapses during examination, should they occur, do not provide grounds of invalidity. Absent proof of inequitable conduct, the examiner’s or the applicant’s absolute compliance with the internal rules of patent examination becomes irrelevant after the patent has issued.”)

[A]

I wonder how many person-hours these rules have wasted and will waste, both inside and outside the PTO.

[anon]

I believe the 5/25 rules were promulgated in clear violation of the APA-mandated notice and comment procedure since they are anonvery different from, and therefore not a "logical outgrowth" from the representative claims rules that were proposed originally. There was no APA-mandated opportunity for public comment on this aspect of the new rules.

[anon-atty]

Webcast was a waste of time, just listening to someone read Powerpoint slides. Lame.

PTO---"steady as she sinks". These changes place more and more burdens on attorneys/practices, hence higher costs for clients and more trouble in and out of court and with the client.

Considering that most cases have 25 or less claims not but examination is still slow and of spotty quality (getting worse every year for the last fifteen years, these and changes will not cure the growing problems with the PTO and the process.

Lower the cost, turn it into a registration system (which it really is), duke it out in court.

Oh for the days of quality examination, filing and issuing for a few hundred dollars and a "no toll road" in the PTO (i.e. not charged a fee for everything.)

[Leslie]

So the PTO has a run on CIPs before Nov. 1 - that sets it back another 5 years?

[C]

Point to Ponder,

I think this is a different situation than Exxon. In Exxon, the PTO determined that it would not enter an amendment to grant a filing date. The Exxon court noted, repeatedly, that there was no statutory or regulatory requirement that precluded the PTO from refusing to enter the amendment. Here, you have Rule 78(d)(1) that says explicitly "The Office's entry of, or failure to delete, a specific reference to a prior filed applcaition that is not permitted by at least one of paragraphs d(1)(i) through (d)(1)(vi) of this section does not constitute a waiver of the provisions of paragraphs (d)(1) of this section." You don't even have an inferred waiver of the rule.

I think there is a real good argument that the claim for priority is dead and intervening art (like the first utility that published more than a year before this third con was ever filed) can be used against the validity of the claim.

What I think is interesting is the possibility that the mere filing of an improper third continuation can actually render the second continuation's priority claim also invalid. Literally, that second continuation is claiming priority to the first utility, which now has its benefit claimed in the first continuation and the third continuation, the third continuation not complying with (d)(1)(ii) through (vi). There is no temporal provision to protect the continuations that came before the third con. So, if you file the third continuation with the petition (d)(1)(vi) which is denied (or the PTO simoly doesn't notice that you needed a petition), how do you resurrect the validity of the second conintuation's priority? Amend to delete the priority claim in the third con before you abandon it? Can amending to remove a claim for priority preserve a subsequent continuation (assuming that you still have copendency with the earlier one?)

What about those PCTs out there that claim priority to a utility but never entered national stage because of the parallel US line? I think those count as a con too. And I don't see how you can reserve or delete the US designation to avoid it.

[SF]

Points to Ponder & C:

What about re-exam? The grounds would be 102 & 103 -- not procedural grounds. Of course, you would rely on 1.78(d) to show that the patent (which was filed on a patent application after 11/01/2007) is not entitled to the priority, but in the end, you'd be arguing 102 & 103. I'm not sure, however, if you can rely on 1.78(d) to show that the patent is not entitled to the priority. Slide 30 of the USPTO PowerPoint says that the new rules apply to applications filed after 11/01/2007, but not reexamination. Does this mean that reexaminations will ignore the 1.78(d) problems of the earlier applications that were filed after 11/01/2007?

[Amoeba]

"Clarity Moves Innovation..." the title of the USPTO Webcast..

What *clarity*? I must have missed that slide. Anyone see it?

[KCB]

Do we have any Nevada attorneys out there? I am wondering if the Casinos are taking odds on how fast there rules go-down in flames. This is better than the Super Bowl. We can all thank Chief Justice Rheinquist for this mess. In the mid-1980s, when he was one back medication, he authored an opinion that was in complete contravention to established U.S. history. He stated that the ex post facto prohibition applied only to criminal law. Now these public servants think they can change the rules whenever they want. For example, not more than 8 years after that sad decision by Rheinquist, Billy-Jeff Clinton promulgated the first retroactive tax increase in the history of the United States. He was undoing the tax breaks of Bush 41. Can you imagine what the next democrat with do with Bush 43's tax breaks? What we have here is another example of retroactive effect of legislation. This must stop. We are in a struggle for nothing less than Freedom. Can you imagine what can happen to our national character if we allow government agencies to retroactively apply rules? We might as well return to have the Crown of England be the head of our country.

[C]

SF,

A reexam is a proceeding, not a patent application. The rules discuss the two separately. I don't think filing a reexam of a current patent would mean that the patent is now subject to the new rules and, therefore, invalid. I think that a patent that issues from an improper continuation, could be subject to challenge in a reexam, citing intervening references.

But, we are talking about a rule violation, not a statutory violation. The PTO has the authority to waive its rules. So, if you file a reexam, can't the patentee file a petition to waive the rules to allow preservation of the priority claim? Rule 78(d) doesn't say that the PTO can't waive this rule. Only that the failure to delete does not constitute a waiver. Because you can't predict whether the PTO will have sympathy for any specific patentee or requester (and decisions on petition have no pecedential value so I wouldn't count on that to predict the outcome), I don't think I would choose reeam as a route to invalidate such a patent. The court seems to be a safer venue to litigate.

[Amoeba]

Say, does anybody know how the divisional and continuation stuff works with species requirements? If I have a big species requirement, which during prosecution, because the way the species are spliced up, the arguments and amendments result in claims covering nonelected species which have to be canceled, e.g. more 2 sets of these unelected species groups/claims. What happens? Are the canceled group of claims considered to be like unelected inventions, such that I can file divisionals covering them? If I have more than 2 unelected groups, I'd use up my available continuations...

[lgb]

Amoeba - check out the FAQ - I believe your question is addressed there. The problem with species is that the restriction is provisional - if your generic claim is allowed, the claims get rejoined. It is kind of confusing. If it is a straight out restriction of patentably distinct inventions (not an election of species), then if you have a 5/25 issue, you cancel, as oppose to withdraw, the non-elected claims and file them whenever you want, during the pendency of the parent, in a divisional - no danger of rejoinder b/c they are cancelled. The whole non-elected species issus is different.