12:01 Tuesday

Wait One Day, Lose Two Days! Not Free!

Today brings the best teaching example I've seen on the importance of promptly responding to Office Actions.

Every patent practitioner knows that there are statutory periods to respond to USPTO Office Actions. Typically, they are six months. Miss those deadlines and you could be up a creek, needing to petition to revive your application, if you can.

However, the PTO generally reduces these to a "shortened statutory period" of three months (two, for certain actions). So if you're late, you simply pay an increasing fee for each month you are delayed, up to the statutory limit. And unless you: a) work only with clients/inventors who respond promptly to your emails (and pay their bills on time); b) don't ever work on litigation matters; c) never take a vacation; and/or d) have been lucky enough to never be jammed with a crisis of someone else's (or even your own) making; then you have almost certainly availed yourself of this "convenient" option provided by the PTO. (In fact, certain litigious patentees in pre-GATT days were known to always use the maximum allowed extensions, to keep an application pending as long as possible.) That first extension month is yours for the low, low price of $150 – and if you are a small entity, it's $75. What a bargain! See 37 CFR 1.17(a).

But there is a bigger price, of course: patent term. Most of us (?) appreciate that these delays can negate extra patent term that would otherwise have been granted under Patent Term Adjustment for PTO delays. Fewer, however, seem to take into consideration the more obvious problem that a delayed response also delays the issuance of the patent. Every day you wait to file that response is, in theory, a day the Examiner is not acting on it, and one more day until that Notice of Allowance arrives.

Combining these costs can yield disastrous results. Enter today's patent, stage right:

U.S. Patent No. 8,110,187 Purification and characterization of cytotoxic lymphocyte maturation factor and monoclonal antibodies thereto Assignee: Hoffman-LaRoche, Inc. Issued: February 7, 2012 Filed: October 8, 2002 Continuation-in-part of ... 07/455,708, filed Dec. 22, 1989. USPTO Delay: 1,057 days Applicant Delay: 392 days Total PTA Adjustments: 665 days.

Commentary: First things first: this patent is DOA. Like the Army patents discussed here a while back, Roche's patent expired a few months ago. Twenty years from the priority date (12/22/1989) plus 665 days PTA = October 18, 2011. Oops. The difference in this case, however, is that the Applicant's delay was solely responsible for the stillbirth. Here's how:

Pretend that Roche had filed all its responses without extension, but that the PTO still had its delays (and that the Examiner's docket was uniformly distributed during that time). Then the patent probably would have issued about 392 days sooner, or January 11, 2011. That is still more than twenty years from the priority date, but there would have been 1,057 days of PTA extension, resulting in an expiration date of November 13, 2012 (normal expiration of 12/22/2009 + 1,057 days). Total patent term would have thus been 672 days (11/13/2012 minus 1/11/2011). Coulda, woulda, shoulda.

So, instead of having two years of an enforceable patent, Hoffman-LaRoche has nothing but the receipts it spent on prosecution. And those receipts probably aren't small – there were three appeal notices, two RCEs and one 453-page submission in an unsuccessful attempt to provoke an interference. Add to this that three different law firms were involved (it was originally filed by the erstwhile Pennie & Edmonds firm, passing briefly through Jones Day, to its current location), along with the clarifications in PTA calculations following the Wyeth v. Kappos case, and perhaps there is some understanding as to how the expiration date issue might have gone undetected.

But all the Applicant delay here occurred by April 2009. At that point, with the terminal date in sight, Roche pressed forward with an Office Action response and full appeal briefing to the BPAI. By the time the reply brief was filed in October 2010, it was a foregone conclusion that the patent could not issue with any term. (Prior to the appeal, Roche could have received a maximum of 226 days extension, to August 5, 2010. Roche gained an additional 439 days for its appeal pendency, and only then because the appeal eventually succeeded in reversing the rejections.)

Bottom line: 392 days of delay results in the loss of 672 days of term for Roche. Valium, anyone?

There are certainly times when extensions are necessary, and even useful. But we need to be mindful of their consequences with respect to term, especially in fields where a single day of a patent's life could have significant value.

Expiration Challenge II

Today Symbol Technologies -- the company that revived the doctrine of prosecution laches to bring down Lemelson's patents -- received U.S. Patent No. 7,738,865.  On the surface, it appears that this patent, like a few of the Army's described in earlier posts, expired long before it issued.  But did it?

You tell me.  When does/did this patent expire?

Hint #1: you will probably have to argue your position using case law.

Winner gets the bottle of Costco ibuprofen sitting in my desk drawer, expired 1/06. (And to you pharma folks -- is there really a harm in my still taking them?)

A more complete discussion will follow.

NTP patents alive, and other tidbits

A few quick hits:

• NTP patents to come out of reexam?  No need to refresh you on holding company NTP, Inc., who nearly shut down the federal government with an injunction on the use of BlackBerry devices.  When that case settled, NTP subsequently sued Palm, Verizon, Sprint and AT&T.  Those cases were all stayed pending the outcome of USPTO reexamination of the patents in suit.
  
  On Tuesday, the Board of Patent Appeals and Interferences issued monster opinions (read: over 200 pages each) on four of those reexaminations.  While two of the decisions affirmed the rejections, two others gave partial reversals -- i.e., some claims survived.  That could possibly lead to the lifting of those stays, and conceivably another round of threatened shutdowns for mobile email users.
  
  If you're looking to do your own analysis, however, you'll have to jump through some hoops.  That's because those decisions are no longer available on the BPAI site.  Tuesday night: there, Thursday night: no trace.  Very odd...  (Please -- no comparisons to other blog-chilling altered docket scandals or banana republics.)  The decisions are available on PAIR, however, but they are large image-based PDFs.  Serial numbers are: 90/006,533 and 90/006,677 (affirmed-in-part); and 90/006,493 and 90/006,495 (affirmed). Here's a teaser first page.
  

• Two more for Target.  I've written before about Target, perhaps the most active retailer in the
  patent prosecution world. As yet another testament to the breadth of its R&D, Target received two patents this week.  One is a method for activating stored value cards, typical of what you might see coming out of the credit card issuers.  The other is for a cosmetic compact.  "Avon calling..."

• More DOA patents.  The last blog post about the U.S. Army's patents that issued "pre-expired" drew more hits than any of my posts in several months.  Not surprisingly, a significant number of those hits came from *.mil addresses.  We'll see if anything comes of that...
  
  But some searching has found a few additional culprits, including none other than Ole Nilssen.  Yes, this is the same Mr. Nilssen who had his patents held unenforceable for various deceptions on the PTO, and was subsequently sanctioned with attorneys fees -- both decisions being upheld by the CAFC. Turns out Nilssen had four patents that were DOA: 6,211,625; 6,211,619; 6,198,228 and 6,144,445.  And he paid at least the first maintenance fee on all of them...making sure to do so as a Large Entity, of course.

TJUH5M7GBGVD

Army Had Received Two Previous Dead Patents

It gets worse...

It turns out there is more to the story of U.S. Patent No. 7,604,811, the Army patent that issued this week with an expiration date in 2004.  Incredibly, the '811 patent is the third pre-expired patent to issue from this same chain.

As explained in the previous post, the '811 patent claims priority back to 06/590,308, which was filed March 16, 1984.  The '308 application served as a priority basis for many other issued patents, including:

• U.S. Patent No. 6,844,010, filed July 18, 2000; issued January 18, 2005.

• U.S. Patent No. RE40,786, issued June 23, 2009 as a reissue of U.S. Patent 5,762,965, which was filed February 9, 1996.
  

Thus, both of these patents also expired in March 2004, which was prior to their issuance by 10 months and 5 years, respectively.

The facts here show that the '811 fiasco was no fluke. As was done with the '811 prosecution, while prosecuting the '010 patent the Army similarly filed a terminal disclaimer to circumvent a double-patenting rejection. In April 2004.  A month after the patent's expiration date.  (Another note on '811 -- it almost was saved with 550 days of Patent Term Adjustment, except there was over 600 days of patentee delay that offset it)

And like the '811 prosecution, the '786 reissue proceedings included substantial argument after the March 2004 expiration date (i.e., nine amendments and an RCE).

If that's not enough, there is also this piece of bad news for the Army: contrary to what I supposed in the previous post, you cannot use a reissue patent to delete a priority claim in order increase the patent's term.  MPEP 1405 makes this quite clear ("[term] cannot be extended through the filing of a reissue"), as does the language of 35 USC 251, which only allows a reissued patent for "the unexpired part of the term of the original patent."  In other words, there does not appear to be any way to resurrect these patents, even if they don't rely on any subject matter disclosed in the 1984 application.

Simply unbelievable.

[10/22 7:44PM UPDATE: There's more: the Army paid the four-year maintenance fee on the '010 patent in February 2008.  Should the PTO give a refund?]

Be All You Can't Be: Army Patent Ambushed by Friendly Fire

You may recall the brouhaha back in the Reagan era when it was discovered that the Navy had purchased some very expensive ($600) toilet seats.

I remember comedian Emo Phillips around that time joking about his letter to the IRS, noting that the value of the paper clip he’d used to attach his check should cover any deficiency in his return, based on Pentagon spending figures.

Today, it appears the Army may have bought some much more pricey toilet paper to match the Navy’s purchase.  How?  By obtaining a patent that expired five years before its issuance.

Here's the relevant excerpts from the patent’s face:

U.S. Patent No. 7,604,811 Oral-intestinal vaccines against diseases caused by enteropathic organisms using antigens encapsulated within biodegradable-biocompatible microspheres Assignee: The United States of America as represented by the Secretary of the Army Issued: October 20, 2009  Filed: December 10, 1996 Continuation of application No. 08/396,986…which is a continuation in-part of application No. 06/590,308, filed on Mar. 16, 1984, now abandoned…

Because this application was filed after June 8, 1995, its term is 20 years from the filing date of the earliest reference specifically referred to for a priority claim: March 16, 1984.  In other words, this patent that issued today actually expired March 16, 2004 – five and half years ago.  35 U.S.C. Section 154(a)(2).

    "But maybe there is Patent Term Adjustment available…" Nope. The application was filed prior to May 29, 2000.  Nothing there.

    "But maybe there is Patent Term Extension available under 37 CFR 1.701…" Nope. There was no interference, secrecy order, or appellate review.  And even if it were available, it could only extend up to five years – to March 2009.

    "But maybe there is an extension pending FDA approval of the vaccine under Section 156…" Nope.  That would also be a maximum extension of five years under Section 156.

This patent is DOA.  If anyone has a good explanation as to why prosecution of this patent was pursued, please share.  (And note that if your answer is "to get the app published," there were other, less burdensome routes available, such as voluntary publication under 1.221.)

So let's see where your tax dollars went over the last five years in pursuing this stillborn:

• Four responses to non-final office actions
• Three responses to final rejections, including two RCEs
• Two Examiner interviews
• One terminal disclaimer filed
• One notice of appeal
• One appeal brief
• One petition to correct priority
• One issue fee payment

That's over $5,700 just in PTO fees.  In this case, those fees are effectively a shifting of government funds from one entity to another.  But it’s hardly an efficient use of resources.  And I wouldn't be at all surprised if the Army spent three times this amount for the attorney's corresponding time.

And of course, there are several interesting and crazy twists:

• First, you did read that list correctly.  The applicant filed a TERMINAL DISCLAIMER in May 2006 – a year after the patent had already expired –to obviate a double patenting rejection.  That's like a baseball team staging a press conference to announce it's not exercising the option to keep the player who retired the year before.

• Second, the Army filed a petition in October 2007 to correct the priority claim to get around an obviousness rejection.  The cited art was a PCT publication from overlapping inventors, and the petition corrected the priority claim to include the underlying 1991 U.S. application of that PCT app.  That is a different app from the fatal 1984 application. But the petition clearly includes the chain going all the way back to the 1984 application, which appeared as a priority document in today’s patent app as originally filed.  In other words, if it wasn’t apparent up to that point (hard to imagine), the Army filed a petition two years ago which on its face evidenced that any resulting patent would not be entitled to any term.

• Third, and perhaps most interesting, the priority claim to the 1984 reference may not have been even necessary.  In the last of the final rejections, the Examiner noted explicitly that the 1984 application "do[es] not teach the specific CFA/I peptides employed in the vaccine and method of the instant claims.  Accordingly, the priority date of the instant application is the filing date of its immediate parent, U.S. Patent Application 08/396,986, filed 3/01/95."

This raises a question: if an application is a continuation-in-part and none of its claims are supported by the ancestor application, should its term be determined by the date of that ancestor app? (Set aside that it makes no sense to file such a C-I-P…)  I don’t think so.  The language of the statute is clear that it is the “specific reference” to the earlier app that determines a patent’s term.  Indeed, the Army could have disclaimed priority to the 1984 application and removed that specific reference.  See MPEP 201.11 III(G) (which amazingly anticipated this type of post-GATT situation).  But it looks like now they’d need to get it reissued. And the Army would probably be estopped from disclaiming priority earlier than April 1991, the date of the underlying PCT application.  Would it take less than a year and a half to push a reissue through? And it doesn't feel right that the Army should serendipitously benefit from the examiner's unsolicited priority statement, either.

• Lastly, and true to form with common perception of government efficiency, care to guess what the Army did prior this patent's issuance?  That's right: it filed a continuation application.  

Sure, it's not Charmin.  But really, how abrasive do you think that official U.S. Patent is?  I'll trade you a couple paper clips for it...