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Applicants Question PTO's Focus on "Compact Prosecution" In Upcoming Reform Measures

By Two-Seventy-One Patent Blog

One of the most important aspects of patent prosecution and application pendency is the the concept of "compact prosecution", which is described in MPEP § 2106(II):

It is essential that patent applicants obtain a prompt yet complete examination of their applications. Under the principles of compact prosecution, each claim should be reviewed for compliance with every statutory requirement for patentability in the initial review of the application, even if one or more claims are found to be deficient with respect to some statutory requirement. Thus, USPTO personnel should state all reasons and bases for rejecting claims in the first Office action. Deficiencies should be explained clearly, particularly when they serve as a basis for a rejection. Whenever practicable, USPTO personnel should indicate how rejections may be overcome and how problems may be resolved. A failure to follow this approach can lead to unnecessary delays in the prosecution of the application.

In the recently-proposed changes to BPAI practice, the PTO received a fair number of comments (link) that were negative towards the proposed rules. One of the biggest sticking points for applicants was the perceived lack of quid-pro-quo on the burdens imposed on applicants versus examiners.

While appeals provide for a variety of different outcomes, the most often outcome (including pre-appeal brief activity) is the reopening of prosecution. In effect, the reopening of prosecution grants a "mulligan" to the examiner on a bad rejection, and leaves the door open for further rejections. This, according to one comment, is a big problem:

The Proposed Rules fail to address several factors which unduly prolong patent prosecution. These factors include repeated reopening of prosecution by the examiner after an appeal brief is filed, as well as after a decision by the Board in which all of the original rejections presented by the examiner were reversed. Such repetitive reopening of prosecution has the effect of preventing judicial review of agency action. Such repetitive reopening of prosecution is also contrary to fundamental legal principle that an administrative agency cannot avoid review of its actions by continuously keeping open activity which prevents judicial review.

As evidence, the commentator pointed to application no. 09/077,337 as a classic example of abuse. The history of the application is as follows:

02/17/00 - 1st non-final rejection.
04/24/01 - Restriction.
06/19/01 - 2nd non-final rejection.
09/18/01 - 1st Appeal Brief.
01/31/02 - 3rd non-final rejection.
03/11/02 - 2nd Appeal Brief.
10/01/02 - 1st Suspension.
06/17/03 - 4th non-final rejection.
07/15/03 - 5 th non-final rejection.
09/19/03 - 3rd Appeal Brief.
11/29/05 - BPAI decision - Examiner reversed.
02/08/06 - 2nd Suspension.
04/25/07 - Request for information under 37 CFR § 1.105.

At wit's end, the Applicant commented in the latest response with the following:

As evidenced by the extraordinary amount of prosecution carried out by the Office, it appears that the Office had long ago internally decided that this application was never to mature into a patent. Thus, as the Office's illegal withholding of application allowance is expected to continue, the Office will predictably not be satisfied no matter how Applicants respond to the current Request for information.

View the response in its entirety here (link)

See 09/077,337 image file wrapper here (link)

While this application appears to be a more extreme case, other Applicants have shared this frustration over "reopening abuse."

See Joe Butscher, "Pre-Appeal Brief Panels Should Allow More Applications Rather Than Reopening Prosecution" IP Today, July 2007 (link)

Full post as published by Two-Seventy-One Patent Blog on December 11, 2007 (boomark / email).