[Updated] The USPTO has made a large set of its petitions decisions available via Google's Bulk Patent Download center. [Link]
I was browsing through them this morning and came across a lonely petition decision that was sent from the Office of Petitions on July 20, 2010. The decision is a response to a petition filed July 16, 2006 requesting that the USPTO overturn a thirteen-way restriction requirement. The meat of the decision reads as follows:
A Notice of Abandonment was mailed March 4, 2009. As the application is now abandoned, the petition to overturn the decision of the Technology Center Director is DISMISSED as moot.
As the quote suggests, this particular case involved a petition to the PTO Director following an unsuccessful petition to the Tech Center Director. Although the first petition was decided fairly quickly, the timing of petitions decisions and the associated fees continue to make it somewhat impractical to challenge restriction requirements.
Another recent petition decision was in Application No. 12/266,477 where the PTO granted Quantumsphere's petition to make the application “special” based upon the application's association with “green technologies.” Designating the application as “special” speeds the prosecution process. The application claims a lower-energy method of synthesizing ammonia.
Actually, you said that it was rare to get a satisfactory explanation of why you were wrong.
That’s the particular case that most concerns me. If I need to satisfy myself that someone else is wrong, I can write the explanation myself.
What I could (and did) say is that it’s refreshing but sadly rare around here to get a satisfactory explanation of why one is wrong.
Actually, you said that it was rare to get a satisfactory explanation of why you were wrong. I offered a possible explanation for your problem. I’m sorry that it was unsatisfactory.
Insufferability is such a drag, isn’t it?
I couldn’t say. What I could (and did) say is that it’s refreshing but sadly rare around here to get a satisfactory explanation of why one is wrong.
Iza think we found one of them those “arrogant” points.
I was looking forward to a really interesting and well-reasoned explanation of why I was wrong. There aren’t a lot of people here that I can count on for one of those.
Insufferability is such a drag, isn’t it?
I agree with IANAE,
That’s a shame. I was looking forward to a really interesting and well-reasoned explanation of why I was wrong. There aren’t a lot of people here that I can count on for one of those.
As I said, I had not looked at the facts.
I agree with IANAE, the express abandonment makes it very hard to assert rights arising after PTO asserts mootness.
the PTO’s dismissal of a restriction requirement on mootness grounds means that the application is revived,
Here’s the thing, though. The application was expressly abandoned by the applicant, with no child continuity. Seems to me, that automatically moots any outstanding issues relating in any way to whether the erstwhile pending claims were entitled to proceed to grant. In my understanding, the abandonment is not an effect of the restriction requirement, there is no possibility of recurrence, and it seems wrong that an express abandonment should retroactively un-happen simply because there is an outstanding petition that is no longer worth the PTO’s trouble to decide because of that same abandonment.
Now, if the application had gone abandoned for failure to respond to the restriction requirement within the prescribed delay, there might have been some effects to eradicate. Except of course that the applicant was still within his power to easily avoid that consequence by withdrawing some claims and later requesting their rejoinder if he succeeded on his petition.
If administrative law requires a different result on these facts, I’d love to see a more detailed explanation of why that is.
Administrative law?
What’s that?
“Dismissed as moot,” huh? That means that the abandonment is retroactively revoked. The Supreme Court tells us that a party’s assertion of “moot” carries a lot of collateral consequences –
– The PTO must “eradicate all effects” of the action complained of
– The PTO must state with assurance that it has taken steps to ensure that there is no reasonable expectation of recurrence.
So (depending on the facts of the case, which I have not investigated), by operation of law, the PTO’s dismissal of a restriction requirement on mootness grounds means that the application is revived, because the clock rewinds to the date before the restriction requirement, the restricted claims are reinstated, and we go forward from there.
Of course that means that Supreme Court precedent on issues of procedural or administrative law have to be respected by the Office of Petitions. That will happen over several dead bodies.
“Although, I doubt many petitions are granted on restriction matters.”
In TC1600 most restriction petitions are granted or granted-in-part, though relatively few are filed.
NOW I know why the Rabbit ran. And why they all split up. And why their buddy AI is busy.
I now know there would be no better reason than to force me into the hole. And to hold me there while a Patent ran it’s course. I now know why I am in Legal Chains.
Begs an answer to my Question.
If a Patent Application is stolen from the Applicant and filed in another country isn’t that Piracy?
“I’d like to see some examples of granted petitions, especially traversing restrictions. ”
Follow the M P E P and you’ll have no troubles. Although, I doubt many petitions are granted on restriction matters. Bad restrictions I imagine are usually taken care of pre-petition if they ever get taken care of.
I’d like to see some examples of granted petitions, especially traversing restrictions.
To paraphrase Malcolm,
Call me all kind and gently, and have your way.
I find that a couple kind and gentle phone calls to the right people usually helps to ensure that a petition gets addressed in a timely manner.
“I can’t help wondering why you assume that the attorney didn’t.”
There is no formal status inquiry in the prosecution history, nor is there any interview summary about an informal status inquiry. Nor were there any interviews to discuss the nature of the restriction requirement or to discuss the nature of the rejection. The only interview was when the applicant intentionally abandoned the application. Certainly interviews are not required, but applicants who conduct them regularly attest to their usefulness in resolving such issues.
Applicant refused to amend the claims after the first rejection solely on the basis that the restriction requirement was improper. Certainly I’m not the only one who sees something peculiar in this.
“He said, as if “in less than a year” were a reasonable time frame.”
Each decision was decided in a few months. IMO, two decisions within a year seems reasonable.
“This was a re-petition of two prior petitions, each decided in less than a year.”
He said, as if “in less than a year” were a reasonable time frame.
“I can’t help but wonder why the attorney didn’t follow up on his 2006 petition before the six-month date.”
I can’t help wondering why you assume that the attorney didn’t.
If there’s one worthwhile discussion we could have it would be with respect to the futility/idi0cy of petitions.
In particular, the futility of a petition to reconsider a petition to withdraw a very well-founded restriction requirement based on the flimsy argument that Ar1-Ar2-R1C=NOR2 is directed to a single invention because of the C=NO in the middle. You don’t have to be a chemist to see that’s a reach.
I can’t help but wonder why the attorney didn’t follow up on his 2006 petition before the six-month date.
That’s another thing. There was no six-month date. The applicant had timely responded to the most recent (non-final) rejection, and then later phoned the examiner to abandon the case. I guess the invention was just as doomed as the petition. Either that, or the applicant couldn’t handle the suspense of waiting for the petition decision.
Next time review the prosecution history for maybe a second or two (if that is not too much trouble). This was a re-petition of two prior petitions, each decided in less than a year.
I have found the Petitions Office, in my limited experience, to be very responsive if you call them after giving them a reasonable period to decide the petition. I can’t help but wonder why the attorney didn’t follow up on his 2006 petition before the six-month date.
“If a petition is not resolved w/in 30 days, the prosecution clock ought to be stopped until it is.”
I would argue it out to stop the clock immediately.
“Frivolous petitions ought to be penalized.”
Perhaps, but how do you prevent the office from abusing that?
“Petition decisions ought to be appealable”
Ahmen
If there’s one worthwhile discussion we could have it would be with respect to the futility/idi0cy of petitions. Talk about a PTO black-hole.
Some suggestions for improving the petition “system:”
If a petition is not resolved w/in 30 days, the prosecution clock ought to be stopped until it is.
Frivolous petitions ought to be penalized.
Some variation of the Equal Access to Justice Act ought to apply to situations where a petition is required to fix egregious PTO errors.
Petition decisions ought to be appealable.
Dennis –
Thank you very much. In case it is not obvious from your perspective, what would be of considerable use is what ever you could provide that would help us divine why a petition of a particular type is granted and why a petition is not granted.
RE Searching Petitions: I’m working on creating a text-searchable version.
DC
Dennis:
Have you found a good way to search the petitions? Randomly clicking on the petitions doesn’t do much, and the csv file in the very beginning doesn’t provide much information to work with.
Hilarious.
The USPTO waits 4 years to decide on a petition and then responds only after the application was abandoned.
How emblematic at the dysfunction of the USPTO.
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