Michael Spector is the co-founder of Petition.ai, the first comprehensive searchable database of USPTO patent petition documents, which enables patent practitioners to efficiently find documents with similar issues and/or fact patterns – the needles-in-a-haystack – to more quickly and easily craft a petition with an increased likelihood of being granted on the first attempt.
As outlined in our article, The Good, the Bad and the Missing: Findings from a Review of the Data on Granted Retroactive Foreign Filing Licenses, Petition.ai’s subscribers’ most searched patent petition type is for retroactive foreign filing licenses (RFFLs). In the article, we highlighted that 71% of applications petitioning the U.S. Patent and Trademark Office (USPTO) for a RFFL eventually are granted. On average, it took 2.3 RFFL petitions over 1.4 years before obtaining the granted petition. We also pointed out 84% of granted RFFL petition decisions could not be found in the Public PAIR’s Image File Wrapper (IFW). Several months after we published the article, and after several communications with the Office of Petitions, these granted decisions were finally published in the IFW. This article examines the most common reasons why the USPTO dismisses RFFL petitions.
In our last article, Part VI, we reported significant Technology Center (TC)-to-TC variation at the U.S. Patent and Trademark Office (USPTO) in pendency and grant rates for petitions pertaining to premature final Office actions. The USPTO Petition Timeline shows these types of petitions are currently decided in an average of 178 days with a 42% grant rate. Because the mere filing of a petition will not stay any period for reply that may be running (37 CFR Section 1.181(f)), a six-month delay in processing after final petitions effectively renders any such decision as futile. Without a decision resolving the status of the final Office action, Applicants are forced to choose between filing an Request for Continued Examination (RCE), a Notice of Appeal, a continuing application or letting the application go abandoned…. In Part IV, we reported many after final petitions were essentially held in abeyance until after the RCE was filed. The RCE was then used as justification to dismiss long-delayed petitions as moot. Here, we identify instances where some petitions were not only granted after the RCE was filed, but the RCE fees refunded.
While researching the U.S. Patent and Trademark Office’s (USPTO) treatment of final Office actions for previous articles (Part I, Part II, Part III, Part IV, and Part V), we noticed USPTO petition pendency and grant rate statistics often differed from results of our analysis. Applicants relying on the pendency information provided by the USPTO Data Visualization Center prior to January 2021 would expect their petitions filed after final to be decided on average in two to three months. However, our prior publications document decisions often inexplicably delayed to such an extent that applicants were compelled to take other action to avoid abandonment of their applications. The USPTO has updated its after final petition data twice since the publication of Part V – now showing a 12-month rolling average processing time of greater than 180 days. A six month delay in processing such petitions renders any resulting decision as futile. Here, we investigate petitions decided during the fourth quarter of 2020 to determine why petition pendency has skyrocketed and what this means for applicants seeking to challenge an Examiner’s premature determination of finality.
Since launching Petition.ai’s searchable database of publicly available patent petition documents filed with the United States Patent and Trademark Office (USPTO), the most searched petition type, by far, is for a Retroactive Foreign Filing License (RFFL). Anecdotally, patent practitioners believe it is difficult, if not almost impossible, to obtain a RFFL. However, while the process may take a long time and may require several petitions, our analysis shows requests for RFFLs are often granted, eventually. A future article will examine the most common reasons why RFFL petitions are dismissed. Finally, our research uncovered some troubling issues with the substantial number of the granted petition decisions not available for public review.