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PTO: $4000 for Track One Acceleration + Working Off the Tail


Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog, Inc.
Principal Lecturer, PLI Patent Bar Review Course
Posted: February 2, 2011 @ 5:18 pm

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Earlier today the United States Patent and Trademark Office announced more details relating to the “Three-Track” program, which was first published for public comment in June 2010.  See USPTO Announces New Examination Rules).  The Three-Track initiative is designed to enable applicants to choose the speed with which their patent application is processed. On Friday, February 4, 2011, the USPTO will publish in the Federal Register a notice of proposed rulemaking on “Track One” of the program, which will give applicants the opportunity for prioritized examination of a patent within 12 months of its filing date for a proposed fee of $4,000.

Sadly, because the Patent Office does not have fee setting authority there will be no reduction in fees available to small entities who otherwise normally pay 50% of most Patent Office fees. Because the Congress controls which fees qualify for small entity preference everyone will need to pay $4,000 to accelerate under Track One. Perhaps this will get Congress to stand up and take notice of the patent system they have so long neglected. I can only imagine the outcry from independent inventors and the small business community. If you are offended by the high fee just be sure to direct your ire where it is deserved; namely in the direction of Congress.

While many are not enamored with the pending patent reform legislation in the U.S. Senate, it would give the Patent Office fee setting authority.  So small entities should know that  the USPTO is working to offer a 50% discount on any filing fee associated with Track One, as it does with many other standard processing fees.  While there are vast disagreements relating to the patent reform legislation, fee setting authority for the Patent Office seems particularly important.  Even more important, however, would be “fee keeping authority,” which would put an end to fee diversion and guarantee that the Patent Office can use the fees it collects to provide the services it is obligated to provide.  The nightmare scenario will be if Track-One goes final (which is virtually assured) and there are takers who pay the extra $4,000 and then Congress once again siphons off money from the Patent Office.  That would be one extremely steep innovation tax indeed!

As a show of how important the Department of Commerce believes the Three-Track program to be, U.S. Commerce Secretary Gary Locke highlighted the Three-Track patent examination program at the White House’s launch of the “Startup America” initiative earlier this week.  David Kappos also spoke of Track-One being “imminent” at the Innovation Alliance conference on January 21, 2011.

“The Patent and Trademark Office plays a key role in promoting innovation and entrepreneurship,” Locke said. “This new system will bring the most valuable patents, as determined by inventors, to market faster and will help shrink the backlog by catering to the business needs of America’s innovators.”

“Since putting our ‘Three-Track’ proposal out for public comment last summer, we have received feedback from innovators across the country supporting these processing options,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. ”Commenters have been particularly enthusiastic about the option to seek faster examination on their most important applications.”

While Secretary Locke and Director Kappos are indeed right, Track-One fees will simply be beyond the reach of many independent inventors and at least some small businesses.  I suspect whatever the fee would be set at would be a cause of concern by many, and even a 50% reduction (if it were available) for small entities would likely not be enough to quell opposition from some corners.  Notwithstanding, I would caution independent inventors and small businesses against completely ignoring Track-One.

In many situations, depending of course upon the technology involved, it is common to wait 4 to 6 years to obtain a patent, and not at all uncommon to wait 2 to 3 years to even hear from the Patent Office in any substantive fashion.  If you have an invention that requires a patent quickly, perhaps to please investors, Track-One is for you.  Thus, it is critically important in my opinion for everyone to be familiar with Track-One even if you don’t think you can afford it at the moment.  There may become a time when you really need the speed it offers.

In some technologies, particularly cutting edge computer technologies and certainly in anything related to computer implemented methods, obtaining a patent is an excruciatingly long process.  There are many scenarios where early stage funding can be obtained to help form the foundation of a company, including application being made for one or more patents.  These early stage Angel investors who sometimes have a tolerance for there not being a patent initially will want to see a patent within some reasonable time frame otherwise they will cut of funding.

When that funding dries up the company stagnates and frequently cannot survive.  For a filing fee of $4,000, which is significant no doubt, a determination on the patent application can be obtained within 1 year.  Having a patent that quickly in a high tech area will no doubt be well worth the filing fee, making the $4,000 acceleration fee a worthwhile investment.

The forthcoming Federal Register notice will request comments from the public on a number of different proposed requirements for participation in Track One, including (a) the proposed fee of $4,000 for each application; (b) limits on the number of claims to four independent claims and 30 total claims; (c) application filing through the USPTO’s electronic filing system (EFS-Web); and other requirements. The comment period will close 30 days after the notice is published, so if you want to be heard you have a limited window of opportunity before the Track-One comment window closes and we wind up with final Track-One rules.

During the program’s first year, the USPTO plans to limit the number of applications in the program to 10,000 to ensure that the USPTO can meet the 12-month goal.  While it is difficult to predict it seems likely to me that the 10,000 application limit will be more than sufficient to provide treatment for everyone who wants to accelerate under Track-One.  I say this because with other innovative programs, for example the Green Technology Pilot Program, have had far less uptake than initial predicted.  As these other programs become more well known they are attracting more applications, but there is always going to be a certain (and likely significant) population of patent attorneys and applicants that do not want to be riding the cutting-edge wave.

The patent industry is “small-c conservative,” and resists change.  We know what works, we know what the laws and rules are (at least for the most part) and we fear how the Federal Circuit and Supreme Court might interpret creative decisions.  Of course, if you can get a start-up client a patent quickly for an extra $4,000 that can mean the difference between the client having an ongoing company and being in the bankruptcy line.  As with everything in the law the unique circumstances of the individual client need to be taken into consideration, and one size fits all legal advice is wholly inappropriate, but it seems that clients should at least be apprised of the options afforded by Track-One.

In other PTO news, earlier today the PTO also announced a new effort to eliminate the “tail” of backlog applications that were more than 16 months old at the beginning of the fiscal year and had not yet received a first Office Action, known as “Clearing the Oldest Patent Applications” (or COPA).  I have also heard this referred to as the “working the tail off” or “working off the tail.” This initiative is deemed by the Patent Office to be a critical first step in reaching the agency’s strategic goal of providing first Office Actions on all new applications in an average of 10 months from their date of filing by 2014.  I don’t know for fact, but suspect this initiative may be why we recently saw a patent application approved that had been pending for 11 years.  See After 11 Years Apple Gets Design Patent on Drop Down Menu. So be prepared to see others issue with similarly unacceptable delays. As I rant about those that I come across I will attempt to keep in mind that those “working off the tail” are not the ones responsible for growing the tail. Nevertheless, we will likely see additional fodder for anti-patent activists who will ridicule the fact that something known for a decade has just been patented.

In any event, the goal for fiscal year 2011 is to have a first Office Action completed on nearly all of the 313,000 oldest backlog applications. Reaching this goal, however, will be highly dependent on the passage of a fiscal year 2011 budget that would provide sufficient resources for hiring and examiner overtime. As most know, the Patent Office is working under peculiar budgetary restrictions. They have plenty of money coming in every day, but because they are not allowed to keep the funds they collect they have to live with the funds that are allocated by Congress. So far the Patent Office is on pace to collect about $400 million more than it has been allocated by Congress, making it a nice revenue generating center at the expense of innovators, who Congress must feel need to be punished with a punitive tax that is akin to a ponzi scheme.

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Posted in: Congress, Department of Commerce, Gene Quinn, IP News, IPWatchdog.com Articles, Patent Reform, Patents, USPTO

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

40 comments
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  1. “In any event, the goal for fiscal year 2011 is to have a first Office Action completed on nearly all of the 313,000 oldest backlog applications”

    Hmmmm…. in 2010 the USPTO issued 447,485 first actions on utility applications. Don’t they typically examine the oldest ones first? So what does this statement really mean?

  2. The one problem with this system is there may be 102(e) type art floating around that has not been published yet. Unknown 102(e) art can cause problems for examiners, the applicant and the public.

    If the 102(e) type art shows up after a non-final action then the examiner is penalized doing re-work and a second non-final action (plus the 1 year determination is out the window).

    If the 102(e) type art doesn’t show up till after allowance then the applicant just paid 4000+ for a patent which can be invalidated. I can’t imaginable and investor would be happy with that outcome.

    Finally, the public might get the short end of the stick if the 102(e) art would be invalidating under the PTO standard but not under the C and C standard.

  3. Steve – This new ‘Track One’ program may help when we get closer to Nord. Speak w/ you at 9. Karl

  4. So unpublished applications are not available to examiners for 102(e)? Interesting. Well, my solution would be to do away with the 18 mo delay in publishing altogether. A provisional application can serve that purpose, at least for 12 mos. I also favor extending provisionals to 24 mos.

  5. Ron,

    Unpublished applications are available to examiners for 102(e).

  6. “Well, my solution would be to do away with the 18 mo delay in publishing altogether. A provisional application can serve that purpose, at least for 12 mos. I also favor extending provisionals to 24 mos.”

    Your solution to the mass of unpublished prior art is to replace the 18-month publication delay with a 24-month delay?

  7. Solutions to problems that do not exist.

    See http://www.patentdocs.org/2011/02/another-academic-with-solutions-to-problems-that-dont-exist.html#comments

  8. I guess the real problem may be that the 102(e) reference doesn’t actually become prior art unless and until it is published, is that right? And a 24 mo provisional would certainly make that situation worse (assuming no publication of provisionals). Is the current practice to defer examination until the reference publishes or is abandoned?

  9. Anon is likely referring to MPEP 706.02(f)(2), which allows for a single exception for a rejection under 102(e) using an unpublished application.

    Even though the statute of 102(e) clearly states a requirement that an application must be published, “an application for patent, published under section 122(b)” to be used under 102(e), MPEP 706.02(f)(2) provides a single exception for a “provisional 102(e) rejection” with an unpublished US application having at least one common inventor or common assignment with the application under examination.

    Otherwise, if the copending applications have no common inventor or assignee, then a provisional 102(e) rejection must not be made in order to maintain confidential status under 122(a).

    Further, a provisional 102(e) rejection only applies to an “unpublished U.S. patent application [which] discloses subject matter which would anticipate the claims in a later filed pending U.S. application”. The keyword there is “anticipate”, so the unpublished application couldn’t even be used for a “provisional 103(a) rejection” if such a thing existed.

    Anon baldly states “Unpublished applications are available to examiners for 102(e)”, which may be technically true. However, such a fact should be given a minimal weight accordingly, considering the strict, unstatutory, and sole exception under MPEP 706.02(f)(2).

  10. So what’s the answer if the examiner has found good but unpublished 102(e) art? Should that examiner busy himself with other cases while he waits for the 102(e) reference to publish, and then make the 102(e)/103 rejection as appropriate?

  11. Jules,

    You are incorrectly applying the keyword of “anticipate.” That word is used in 102 because you are in section 102 (the anticipation section). The parameters of 103 are based on 102 and the use of 102(e) is likewise available for 103 rejections.

  12. 103 (c)(1): Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.

    In other words, absent the ownership by the same person, 102(e) art is fully applicable for 103 rejections.

  13. Furthermore, you cite an incorrect portion of the MPEP. You should have cited MPEP 706.02(k), wherein the following is quoted (exception not cited): “Where two applications of different inventive entities are copending, not published under 35 U.S.C. 122(b), and the filing dates differ, a provisional rejection under 35 U.S.C. * 103 >based on provisional prior art under 35 U.S.C. 102(e)< should be made in the later filed application

    “Baldly”, indeed.

  14. Well look at that. Your argument grew some hair.

  15. If that is your apology, it is accepted.

  16. Don’t take it personally, but an apology is not necessary. I still say your original statement was quite bald, as it was a single sentence accompanied with no citations.

    I’ll try to get back to you later to address any substance your follow-up comments may have. But in the meantime, let’s just leave it this: the 102(e) statue says “published”, while the MPEP allows some exception for “unpublished”. Which carries more weight, the statute, or the MPEP?

  17. The portion of my original comment I will retract is this:

    “the unpublished application couldn’t even be used for a “provisional 103(a) rejection” if such a thing existed.”

    According to MPEP 706.02(k), a provisional 103(a) rejection does exist. However, it still only applies in the strict scenario of unpublished provisional 102(e) art explained in MPEP 706.02(f)(2) where the copending applications have a common inventor or assignee.

    See MPEP 706.02(k) regarding provisional 103 rejections, “See also MPEP § 706.02(f) for examination procedure in determining when provisional rejections are appropriate. Otherwise the confidential status of unpublished application, or any part thereof, under 35 U.S.C. 122 must be maintained.”

    The point is that “provisional” rejections are used in a very limited sense. They do not apply to art that does not have any common inventor or assignee. Unless there is only one applicant to the PTO, that is quite a majority and mass of “provisional 102(e) art”. In addition, “provisional rejections” are contrary to the law.

    The elephant in the room is the huge mass of unpublished prior art that can not be used in a provisional 102 or 103 rejection, which can later be used to invalidate a patent quickly issued under Track 1. While I don’t necessarily think it is a huge problem, it is at least something that should be acknowledged for the benefit of the public. Just admit there is additional risk of obtaining a later-found invalid patent under Track 1. Failure to acknowledge such limitations of this proposed system could cause unrealistic expectations and a patent bubble.

  18. Don’t take it personally, but an apology is not necessary

    You also said it was wrong and proceeded to quote the wrong portions of the MPEP to show why it was wrong.

    So what do you call the opposite of bald, wherein the hair grows inward and destroys the brain?

    They do not apply to art that does not have any common inventor or assignee.

    Jules, really? Try again.

  19. Prolonged non-publication would seem to be at odds with with the goal of reducing pendency generally. If we want to accomplish the latter, some concessions may have to be made with respect to confidentiality. Perhaps the 102(e) reference could be disclosed under NDA to the track 1 applicant against whom it is being cited.

  20. Are you confused by MPEP 706.02(k), where the portion you cite says … “Where two applications of different inventive entities are copending … a provisional rejection under 35 U.S.C. * 103 >based on provisional prior art under 35 U.S.C. 102(e)< should be made in the later filed application”?

    Because "different inventive entities" is a poor choice of words. It simply means the inventors are not exactly the same. It does not exclude a situation with a common inventor. It does not mean no common inventors.

    Example:
    App1 has inventors A, B, and C.
    App2 has inventors A, B.
    They have different inventive entities, but at least one common inventor.

    Again, it does back to MPEP 706.02(f)(2), as I made clear.

  21. “You also said it was wrong and proceeded to quote the wrong portions of the MPEP to show why it was wrong.”

    I did not say it was wrong. Actually I said your statement was technically true, and acknowledged it as a fact.

    What I did say was that it should be given minimal weight “considering the strict, unstatutory, and sole exception” provided in the MPEP.

  22. MPEP 706.02(f)(2):

    “If there is no common assignee or common inventor and the application was not published pursuant to 35 U.S.C. 122(b), the confidential status of applications under 35 U.S.C. 122(a) must be maintained and no rejection can be made relying on the earlier filed, unpublished application”

  23. Ron:

    “Perhaps the 102(e) reference could be disclosed under NDA to the track 1 applicant against whom it is being cited.”

    That’s an interesting suggestion. The PTO does have a database of pre-publication documents called USPAT. Although I bet searching that database for “unpublished 102(e) art” (whatever that is) that would increase the search burden on the examiner, as I doubt that databse is currently searched for anything other than obviousness double patenting and interference.

  24. Correction: the database is called UPAD.

  25. Prolonged non-publication would seem to be at odds with with the goal of reducing pendency generally

    That would be incorrect – generally.

    Ron, these are unrelated items. Changing one would have no effect on the other.

  26. Ron:

    “Perhaps the 102(e) reference could be disclosed under NDA to the track 1 applicant against whom it is being cited.”

    Although interesting, another pitfall to this suggestion is if the reference provided under an NDA belongs to a close competitor, and now their secrets have just been given away to their closest competitor.

  27. I would actually go further and suggest that prolonged non-publication is somewhat at odds with the basic quid pro quo of patent law – disclosure to the public (including competitors) in exchange for limited IP rights. Anyway, it does appear that unpublished applications are either causing delays in examination, or reversals of prior examination results, neither of which is a good thing. The criticism of NDAs is well taken – I withdraw that suggestion. It may be that the only way that accelerated examination can proceed in the face of a unpublished 102(e) reference is to give the applicant of that reference a simple choice – immediate publication or abandonment. In other words, the ability to defer the decision between trade secrecy and patent protection through non-publication is a luxury that can only be afforded insofar as it does not adversely impact expeditious examination in general.

  28. Gene-

    While the fast track may seem expensive for many independent inventors at $4K, it has some benefits that I personally find to be extremely attractive, and would seriously consider it if either I could afford right now, or got creative with a potential licensee. For instance, I have a PPA filed now, which sets an earlier priority date, which is allowing me to experiment with a new type of wind turbine which needed to be test flown to validate the invention, and develop a proposed production version of it. I am thinking that I will file a missing parts NPA before showing it to potential licensees at the largest wind energy trade show ever at the end of this May by using videos of it operating to show what it does but not how it works.

    If somebody bites on a possible licensing agreement, they will be concerned as they should in my opinion that I don’t have a patent in hand yet, and that it might take 3 years to get one allowed. However if they are able to see a potential market of 10K units per year, I would bet you dimes to donuts that they would gladly pay the 4K to get a patent in a year, and completely avoid the Application from being published to the world some 2 years before “we” had been granted a patent. This latter presumes that I was dumb enough to not request nonpublication, and that the fast track can be elected at any time after the filing of the NPA. Also the licensee might want to have their own practitioners modify the application to suit their needs, which would save the inventor tons of money, while they are taking time off of their day job and buying expensive materials to prove the concept.

    That way all I would need to do is develop the broadest claims that I think I can get away with and then maybe some others I have discovered through experimentation just to test the limits of what be possible to get granted, and just pay the filing fee for the missing parts NPA and hopefully the licensee’s counsel can take over from there as being the assignee. If nobody bites, I still have another year to try again, and I won’t have to worry about an overseas competitor importing cheap knock-offs that I would be powerless to prevent, until I had been granted a US patent after they had possibly flooded the market before I licensed the concept or boot-strapped my own production of them. Does that sound like a reasonable plan to anyone? I’m still sorta making this up as we go along, as things are changing very rapidly in patent law these days, which makes me a bit nervous sometimes with all the anti-patent folks around trying to tear down the value of my IP rights. If the deal goes through, I can then go on to the next on my list, and will easily be able to afford the fast track on the next project from the get>go.

    Best regards,
    Stan~

  29. Jules writes in part:

    “Although interesting, another pitfall to this suggestion is if the reference provided under an NDA belongs to a close competitor, and now their secrets have just been given away to their closest competitor.”

    Exactly right in my opinion Jules. If the latter applicant were to be allowed to see the “prior art” I wouldn’t be surprised at all to see that the claims of the newer application had morphed into something different during the prosecution of the latter’s application. An NDA is just a signed piece of paper, and will be mostly useless if a dishonest person signs one. “So sue me!”

    Stan~

  30. Ron,

    Now you are more than generally incorrect:

    I would actually go further and suggest that prolonged non-publication is somewhat at odds with the basic quid pro quo of patent law – disclosure to the public (including competitors) in exchange for limited IP rights

    The problem most directly is that the publication happens (typically) with no guarantee of the exchange of IP rights. Once upon a time, your statement may have been true (back in the day when no mere application was ever published prior to having the patent right in hand – a true Quid Pro Quo), but with publication at the 18 month mark from earliest priority (so for non-provisionals filed near the year anniversary of a provisional – that would be six months after filing) and the three year to even a first action (typical – a few art units have less, a few more have more) = much less an actual patent grant, you can see that the disclosure to the public happens much before (if ever) patent rights are obtained. Sure one can opt out of publication – but only if foreign rights are foregone.

    Ron, why does it feel more and more that you really understand less and less about the patent world?

    Drink that Kool-Aid in moderation, my friend.

  31. One of the potential upsides of track 1, in contrast with the current system, is that you may actually get an issued patent before it publishes, if you want that and are willing to pay the extra fee to get it. But that won’t mean much if a 102(e) surfaces shortly thereafter and invalidates it through a substantial new question of patentability. The chances of that happening are probably small, but the negative effect, in my opinion, would far outweigh the very slight potential negative impact of somewhat earlier publication of the 102(e) reference. Most of the other countries in the world seem to get along fine without prolonged non-publication.

  32. One more thought. Why not make the ability to defer publication until issue a fringe benefit of track 1? Except in the extremely rare case that the track1 application itself becomes a 102(e) reference against another application. Track 2 & 3 would not be eligible for that benefit since they’re likely to remain in prosecution far longer. Provisionals would not be published unless converted.

  33. Once upon a time, your statement may have been true (back in the day when no mere application was ever published prior to having the patent right in hand – a true Quid Pro Quo),

    That’s a great example of a system that was very clearly and deliberately set up to benefit the patentee, but then changed when we realized it was severely harmful to the public. Because the patentee’s interests aren’t the only ones that are important here.

    Of course, it wasn’t changed that much, and anybody can still have their pending application remain unpublished if they want, but for some reason very few people think to ask.

  34. One thing is for sure, a $4K fast track will absolutely kill the current Accelerated Examination procedure. No Examiner Support Document with it’s estoppel issues and probably a lower total cost than what the majority of petitions to make special cost (search + ESD prep + reply to overcome the auto-dismissal by Bob W).

    I’d heard that this was going to be the case and is why the AE rules/guidelines/templates were never updated to match with the reality of how AE cases were handled. (For instance: the search is dismissed and the searcher needs to amend the search to overcome the dismissal – but legally they are not the agent/attorney of record, so how do they talk about the case with the examiner – hmmm.)

    Oh well, my AE gravy train had to come to a stop eventually. But it was fun for awhile. And now we (the world) have hundreds of issued IBM patents with very sketchy pre-X search statements (not my doing) waiting to be given their day in court. (7,472,081 is perhaps my favorite with it’s listed, manual field of search encompassing 140,000+ references. Have fun enforcing that one.)

  35. Jules,

    This conversation started when Ron Hilton asked if unpublished applications were available to examiners for 102(e).

    They are.

    Ron’s questioning continued, wondering if it took publication to make a 102(e) reference a prior art.

    It does not.

    My “bald” reply to Ron’s first question need no more than to answer that question.

    You took it upon yourself to critique my answer, disparaging it (calling it merely “technically true) and mangling the law (35 USC) and the guidance procedures (MPEP). You pointed out incorrectly that only anticipation is served, while obviousness escapes (“the unpublished application couldn’t even be used for a “provisional 103(a) rejection” if such a thing existed”).

    When I pointed out your error – both in the law and in the guidance procedures, you disdainfully suggested that now my position had grown hair. I gave you the benefit of the doubt for your rudeness in accepting your “apology” and you scoffed: “no apology needed – no citations” – I ask you: What good are citations, if you don’t understand what you are citing? If you cannot understand what you are citing?

    The fact that you misunderstood and called for my “technically” correct answer to be given minimal weight is compounded by your continued mistakes. – I illustrated the law portion, which must have slipped by you – and which probably served as your single (unapologetic) retraction, yet you then again misinterpret the MPEP, thinking that provisional rejections do not apply to art that does not have any common inventor or assignee, and baldly stating that “ In addition, “provisional rejections” are contrary to the law”. You call for a huge problem to be acknowledged when no such problem exists. You are seeing phantom elephants (and I do not know what you have been drinking).

    You then further compound things by implicating that I am confused by the portion of the MPEP that I quoted to you. And yet again you harken back to MPEP 706.02(f)(2), as if that supports your position.

    It does not.

    The funny thing is that you think it is so clear. Your call for the sections under discussion to be given minimal weight indicates you do not understand law. Your arrogance is astonishing.

    Rudeness is one thing, and something I can deal with on blogs. Arrogance is yet another thing, and also something I can deal with – when that arrogance has been earned. Being wrong, rude and arrogant is quite another thing. This combination, as enshrined in your posts here, call for a metaphysical beating.

    You need to take the time to actually read the law and the MPEP sections on this topic in their entirety carefully. Be careful to note that more than one application is under discussion in your oft quoted section (“the earlier filed”) and that this earlier filed application is the one (rightfully) that escapes rejection and that the second application (the later filed) is the one that (rightfully, and yes lawfully) receives a provisional rejection.

    And do not take the metaphysical beating personally. If you are a practicioner, you do need to understand this in order to avoid leading your clients astray, and if you are an examiner, you better damn know what you are doing.

    In the meantime, You have led Ron astray here. I am glad to be of service to set him (and you) straight.

  36. “Be careful to note that more than one application is under discussion in your oft quoted section (“the earlier filed”) and that this earlier filed application is the one (rightfully) that escapes rejection and that the second application (the later filed) is the one that (rightfully, and yes lawfully) receives a provisional rejection.”

    Then please explain MPEP 706.02(f)(2)(ii):
    “If there is no common assignee or common inventor and the application was not published pursuant to 35 U.S.C. 122(b), the confidential status of applications under 35 U.S.C. 122(a) must be maintained and no rejection can be made relying on the earlier filed, unpublished application, or subject matter not supported in a redacted application publication, as prior art under 35 U.S.C. 102(e).”

  37. What a sad, sad reply, Anon. I repeatedly provide you with substance, and all you can do is take it personally.

  38. This post is a helpful reminder as to why it is important to put an end to fee diversion before the 3-track plan goes into effect — it would be criminal to let Congress plunder an even bigger share of the patent office’s earnings.
    http://www.aminn.org/webcast-aipr-patent-reform-presentation-us-patent-and-trademark-office

  39. Seems the 3-track plan was put on indefinite hold. Anyone have any updates on this?

  40. Mark-

    That is indeed correct. See: http://ipwatchdog.com/2011/04/22/pto-announces-austerity-measures-in-face-of-financial-crisis/id=16573/

    -Gene