“Late entry of an after final petition, either by design or happenstance, strongly correlates with the petition being further delayed and ultimately being dismissed as moot.”
While researching the U.S. Patent and Trademark Office’s (USPTO) treatment of final Office actions for previous articles (Part I, Part II and Part III), we noticed too many petition decisions dismissed as moot for it to have happened by chance. Here in Part IV, we examine timely filed petitions that were dismissed as moot because the USPTO decision was inexplicably delayed to such an extent that applicants were forced to take other action to avoid abandonment of their applications. We uncover two different and seemingly arbitrary petition processing pathways within the USPTO: petitions which are promptly entered and decided on their merits or petitions belatedly entered and eventually dismissed as moot. We uncover a strong correlation between the USPTO’s initial petition processing steps, petition pendency and petition outcome.
USPTO After Final Petition Process Delays Affect Petition Outcome
Final Office actions close prosecution with a six-month deadline. Should after final practice fail to place the application in condition for allowance, applicants must file a Notice of Appeal, a Request for Continued Examination (RCE) or let the case go abandoned. If an applicant seeks to challenge an improper final Office action, filing such a petition does not stop the six-month clock. While applicants are subject to a two-month petition deadline, the USPTO can use its discretion to decide the petition quickly or slowly. Lengthy delays are commonplace. Yet frustrated applicants can only wait four months for a decision, if the request is filed close to the sixty-day deadline. USPTO personnel routinely warn petitioners to expect a three to six month wait for petition decisions. Table 1 includes pendency data and grant rates for petitions related to premature final rejection, obtained from the USPTO Data Visualization Center.
Lengthy petition processing delays are especially perilous after final. In the 12 months prior to April 1, 2018, petitions relating to premature finality were decided in an average of 184 days, i.e., six months, which effectively ensured futility shown in Chart 1.
Petitions pertaining to premature final rejections lose all practical significance when finality is withdrawn via a RCE. As the USPTO runs down the clock, applicants are caught in a game of chicken – wait for a favorable petition decision at the risk of incurring additional extension of time fees or cut their losses by filing the RCE prior to decision. When applicant blinks and files an RCE, the USPTO then uses that RCE to justify dismissing the petition as moot on the basis that applicant withdrew finality via the RCE. (In rare instances, a petition may be dismissed as moot when the examiner sua sponte withdraws finality, a topic beyond the scope of this article.)
Analysis of After Final Petitions Dismissed as Moot
A search query of the Petition.ai database using the keywords “ ‘dismissed as moot’ AND 1.181 AND RCE” quickly identified many decisions dismissed as moot without addressing the merits of the petitions. The queried decisions were reviewed to identify those pertaining to premature final rejection in which an intervening RCE was filed prior to petition decision.
We identified and analyzed a sample of 25 decisions mailed between 2015-2020, coded here as AAA-XXX. The decisions, signed by 13 different USPTO personnel, arose from seven different Technology Centers (TCs). The petitions were filed by 25 different applicants. We reviewed the electronic file of each application to determine how many calendar days passed between the petition filing date and the decision mail date. See Table 2.
These 25 petitions were dismissed as moot in an average of 132 days, over four months, with a range of 14 to 288 days. When a petition filed two months after a final Office action is subjected to a further four-month delay, applicants are pushed right up to their six-month deadline for filing an RCE or Notice of Appeal before their application becomes abandoned. Chart 2 shows petition pendency as a function of the decision date for each TC.
The data shows wide petition pendency variation across 2015-2020. While USPTO data in Table 1 suggests dramatically improved petition pendency beginning in 2019, this was not evident for Decisions AAA-XXX.
Some Petitions Languish in PAIR Purgatory
During this survey, we noticed numerous discrepancies between the Public Patent Application Information Retrieval (PAIR) Image File Wrapper (IFW) and information manually entered into PAIR transaction history. Decision FFF’s petition was filed on August 13, 2019, but not entered into PAIR until sometime between October 23 and November 21, 2019, after the RCE was filed. Decision FFF was then dismissed as moot citing the intervening RCE.
If the USPTO relies upon PAIR transaction history to generate pendency data, Decision FFF would erroneously appear to have been decided within 30 days, instead of 101 days. Interestingly, the actual sequential entry of papers is not displayed in the transaction history of the USPTO’s new electronic filing tool, Patent Center.
In addition to finding petitions entered out of chronological order, we also found petitions entered with incorrect filing dates. For example, Decision OOO was belatedly entered into PAIR transaction history with the May 3, 2017 date instead of the actual December 9, 2016 filing date.
If the USPTO relies upon PAIR transaction history data to generate pendency statistics, Decision OOO would erroneously appear to have been decided within one day, instead of 145 days from the actual December 9, 2016 petition filing date. This is not an isolated example – we found six other TC3600 petitions and three TC1700 petitions entered with incorrect petition filing dates. See Part II’s Decisions J, O, R and W; Part III’s Decisions EE and TT; and Part IV’s Decisions OOO, QQQ, RRR and SSS.
To verify whether petitions decided on their merits also languished in PAIR purgatory, we reviewed the USPTO electronic file for petitions analyzed in Part II and Part III. We found that many petitions decided on their merits were immediately and correctly entered into PAIR transaction history.
To identify the extent of the data discrepancies, we analyzed IFW and PAIR transaction history data for Decisions AAA-XXX and for 31 petitions decided on their merits in Part II (Decisions A-X) and in Part III (Decisions AA, BB, EE, GG, II, LL and SS). For petitions entered out of chronological order or with incorrect dates, we used the entry date of the document entered prior to the petition as a conservative proxy. We calculated the number of calendar days from: (i) the petition filing date to the petition entry date into transaction history, (ii) the petition entry date to the decision date and (iii) the petition filing date to the decision date. The results, sorted from the fastest processing time (5 days) to the slowest processing time (288 days), are shown in Table 3.
The data in Table 3 is displayed graphically in Chart 3.
Chart 3 shows that the petitions dismissed as moot (red lines) are processed differently from petitions decided on the merits (blue lines) and that this differential processing begins on the day the petition is filed. Petition decisions on the merits strongly correlate with the promptness with which the petitions are entered into transaction history (solid lines). We discovered that 17/17 (100%) of the petitions entered within 4 days of filing were decided on their merits. In contrast, 22/30 (73%) of the petitions entered more than 30 days after their filing date were dismissed as moot.
Petitions ultimately dismissed as moot are entered into the transaction history 106 days on average after filing. In contrast, petitions ultimately decided on the merits are entered on average within 24 days. Interestingly, the petition review process times are very similar, 24 days and 27 days, for petitions decided on their merits and dismissed as moot, respectively. In essence, the difference in pendency can be almost entirely attributed to how long it takes for the petition to be entered into PAIR transaction history. See Table 4.
The large discrepancy cannot be attributed to differences in time and effort spent to generate the decisions. Decisions addressing the petitions’ merits are explanative and detailed, often 4-6 pages long. Decisions AAA-XXX are 1-2 pages in length, requiring only a cursory review of the file and an insignificant effort to prepare. If anything, decisions on the merits should take longer to issue than decisions dismissed as moot.
Concurrently Pending Petitions Processed Differently
TC personnel typically process petitions and draft decisions for the Group Director’s review and signature. Thus, TC petition backlogs and/or TC staffing levels could affect petition pendency. If so, one would expect concurrently pending petitions to be processed in the same manner and time frame. However, our analysis identified three pairs of concurrently pending petitions that received dramatically different treatment. See Table 5.
- Petitions filed in February and April 2016 received dramatically different treatment in TC1600. One was promptly entered into PAIR transaction history on its filing date and granted within 70 days while another had been belatedly entered into PAIR transaction history 164 days after filing. The late-entered petition was then promptly dismissed as moot six days later. Compare Decision C with Decision AAA.
- In early May 2017, a TC3600 Director decided the merits of a petition filed 42 days earlier but dismissed as moot another petition filed 145 days earlier. PAIR transaction history shows that the dismissed petition, belatedly entered with the incorrect May 3, 2017 filing date, appears to have been decided in one day. Compare Decision J with Decision OOO.
- In TC3700, an August 2018 petition had been belatedly entered into PAIR transaction history in December 2018 and dismissed as moot eight days later, while a November 2018 petition was promptly entered into PAIR transaction history and granted within nineteen days. Compare Decision U with Decision YYY.
USPTO Uses PAIR Purgatory to Run Down the Clock
In this article, we identify delayed PAIR transaction history entry as the mechanism by which USPTO runs down the clock. Petitions dismissed as untimely or moot are processed far slower than average and have a very low grant rate (0% in our sample). Lumping slowly processed dismissals (untimely or moot) together with petitions promptly decided on their merits inflates the pendency average and deflates the grant rate. Our results show that 58% of the petitions in Part II and Part III decided on their merits were granted in an average of 48 days. Moreover, we found 65% of the petitions decided on their merits were entered into PAIR transaction history within four days of filing and granted within an average of 33 days. See Table 6:
In contrast, USPTO data in Table 1 portrays only a 41-45% grant rate. The inclusion of data for late-entered petitions masks these favorable results for applicants. PAIR data entry errors further muddy the waters, resulting in unreliable petition pendency statistics. Purported high pendency averages and low grant rates embolden examiners to make and maintain premature final Office actions while discouraging applicants from challenging premature final Office actions.
Late entry of an after final petition, either by design or happenstance, strongly correlates with the petition being further delayed and ultimately being dismissed as moot. We found no rhyme nor reason why some petitions are promptly entered into PAIR transaction history and other petitions languish in PAIR purgatory.
These two seemingly arbitrary processing pathways create unnecessary uncertainty and result in otherwise avoidable expenses, including significant extension of time fees. Moreover, extensive delays dissuade applicants from filing petitions and limit applicant’s ability to request reconsideration, topics to be covered in upcoming articles
Join the Discussion
9 comments so far.
Paul F MorganNovember 19, 2020 02:34 pm
P.S. As to comment 6, note that it is not just decisions on petitions after second action finals that can get delayed long enough to be avoided by forcing applicants to do something else before the application goes abandoned.
AAA JJNovember 19, 2020 01:34 pm
“Especially, to deliberately make it impossible to challenge improper examiner restrictions…”
Filing a petition to withdraw a restriction in combination with a notice of appeal and a pre-appeal request is a way to boost your chances. It works almost like magic.
AAA JJNovember 19, 2020 01:32 pm
“The PTO has been getting away with this for many years. Especially, to deliberately make it impossible to challenge improper examiner restrictions and other unappealable examiner conduct.”
I remember getting a Notice of Allowance. Sent it to the inventors with the usual report and questions. Needed to add an inventor. Prepared a petition to amend inventorship and filed within a week.
Issue Fee due date comes up. No action on the petition. Paid the fee.
A couple months later I get a decision on my petition. Denied. Because it’s no longer an application. It’s now a patent. Need to file a petition to change inventorship in a patent.
Can’t make this stuff up.
Paul F MorganNovember 19, 2020 01:08 pm
Re: “..petitions that were dismissed as moot because the USPTO decision was inexplicably delayed to such an extent that applicants were forced to take other action to avoid abandonment of their applications.” The PTO has been getting away with this for many years. Especially, to deliberately make it impossible to challenge improper examiner restrictions and other unappealable examiner conduct.
AAA JJNovember 19, 2020 09:30 am
“This has been long known as a dirty secret (without recourse) to petition practice.”
Exactly. The purgatory of the petitions process is a feature, not a bug. And it is rooted in the mindset of “just say no the first time and see what Applicant responds with” that permeates the PTO. So some TC Director flunky or petitions person spins their wheels figuring how to deny a clearly grantable petition rather than granting it. And wastes time making up nonsense to “build a record.”
AnonNovember 19, 2020 07:26 am
ipguy – my experiences have been very similar.
If the Office wants to focus on quality examination, then BITE has to be provided to the petition process (and not just after final — but proper recourse to arriving AT improper finality).
As you note, this is likely a decades long issue (which was only partially alleviated with count changes that helped some of the more blatant RCE gravy train practices).
ipguyNovember 18, 2020 08:24 pm
I was planning to post something similar.
The seemingly deliberate indifference given by the USPTO to After Final petitions has been going on for decades, and my mentors told me early on that a petition was a waste of time because it wouldn’t be decided before the end of the statutory period.
In my experience, the only quick (relatively) and effective way to get an Examiner to withdraw an improper Final is to call the Examiner (if the Examiner is a Primary) or the Examiner and their SPE and get them to do it without a petition being filed. It’s far more face-saving for them. Even then, it has to be pretty blatant that the Finality was improper. I once dealt with an Examiner whose understanding of Finality was so bad that, in the end, I obtained a string of five consecutive “Non-Final” Office Actions before there was a legitimate “Final” Office Action (about four years after the mailing date of the first action on the merits).
David LewisNovember 18, 2020 07:46 pm
Thanks for this article!
AnonNovember 18, 2020 06:04 pm
This has been long known as a dirty secret (without recourse) to petition practice.