Administrative Purgatory: Waiting 14 months and counting for action after Board reverses examiner

By Gene Quinn
July 19, 2016

LimboImagine you filed a patent application over thirteen (13) years ago. You would probably expect that you would have a final decision, one way or another, by now.

Well, you’d be wrong!

Incredibly, inventor Mark Beck still does not have a final decision in his patent application — Application No. 10/447,823 — which he filed on May 29, 2003. Worse yet, Beck earned a complete reversal of each and every rejection made by the patent examiner in an appeal to the Patent Trial and Appeal Board. The Board decision issued on May 5, 2015, which is over 14 months ago. See Ex parte Mark Beck. In what can only be characterized as a breathtaking show of disregard for the Board, the Patent Office has still not taken any action on Beck’s application.

Beck won a complete and total reversal of all examiner rejections over 14 months ago and he still has no patent. More astonishing, the TC Director has not authorized reopening of prosecution either. So it seems the victorious Beck finds himself in an administrative purgatory. Since he was completely victorious on appeal to the Board there is nothing for Beck to appeal. Effectively prevented from seeking redress by an Article III court, Beck must wait hoping that a patent examiner will eventually decide to either allow the case or ignore the Board and reopen prosecution. In the meantime, the Patent Office apparently has the authority to do nothing.

How is it possible for an examiner to simply ignore the Board? Well, as it turns out, the Board has absolutely no authority over examiners or TC Directors. Board decisions are merely advisory in nature when an examiner is reversed. The only time an examiner or TC Director actually issues a patent after a Board reversal is when that examiner or TC Director willingly acquiesces to the Board. If the examiner or TC Director does not acquiesce to the reversal the Board is completely without authority to implement its own decision.

Unfortunately for Beck, and many other inventors, examiners and TC Directors in Technology Center 3600 choose not “to carry into effect the decision” of the Board, as they are directed to do by 37 CFR 41.54. Typically what is done in TC 3600 is the Board decision is just ignored and prosecution is reopened using the extraordinary authority provided in 37 CFR 1.198. New searches are conducted in violation of MPEP 1214.04, and applicants are subjected to further harassment by examiners. See The Impotence of the Patent Trial and Appeal Board. That is not what is happening here though.

This case sheds light on what seems to be an unfortunate, and perhaps well-coordinated plan. Delay, frustrate, harass and ignore patent applicants. Issue frivolous rejections if necessary, but reject at all costs. If the Board issues a complete reversal just reopen prosecution. Eventually the patent applicant will get the idea and abandon the application, which is sadly what generally does happen. TC 3600 seems to be fighting a very successful and coordinated war of attrition against applicants.

Attorneys and applicants have complained about the nonsense within TC 3600 for years. Over and over again the Patent Office says they look into the situation but there is no merit to the complaints. Meanwhile, patent examiners in these Art Units laugh openly about what management tells the public, and the media. They also proudly proclaim that there is nothing anyone is going to do to get them to issue patents because even if senior management were to identify the problems they would be at the Office far longer than any of the senior managers, who are really just transitioning out anyway.

So who exactly is running the Patent Office? If senior managers are in the dark, which is becoming increasingly difficult to believe, they had better quickly get a grip on what is actually happening and stop letting the inmates run the asylum. Examiners and TC Directors that fundamentally hate patents and are willing to go to whatever lengths it takes to deny applicants patents. These recalcitrant employees are doing real damage to the institutional fabric and integrity of the Patent Office, not to mention America’s innovative economy.

As problematic as the systemic reopening of prosecution in TC 3600 is, the outright refusal to even acknowledge a reversal by the Board for over 14 months is far worse. It is unconscionable that the Patent Office would allow an applicant who was forced to appeal bogus rejections to further be thwarted after winning a complete reversal. This type of intentional harassment of applicants must be addressed. The Patent Office must open an immediate investigation into this and the many other irregularities within TC 3600. The Commerce Department Inspector General must launch an investigation as well. The Patent Public Advisory Committee (PPAC) should demand answers.

Meanwhile, inventor Beck, who filed his patent application on May 29, 2003, continues to wait. How much longer will he have to wait too even learn whether he has earned the right to be further harassed by the reopening of prosecution?

__________

IMPORTANT NOTE: Mark Beck did NOT cooperate in any way, shape or fashion with the research or writing of this story. Neither did his attorneys or anyone at the firm that represents him. This situation was discovered through the use of public record documents. Therefore, no one at the Patent Office should feel the need to exact any degree of retribution against Beck or his attorneys.

 

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 17 Comments comments.

  1. Urko July 19, 2016 6:21 pm

    IMHO, what he could have done, is declare it part of “Black Lives Matter.” Then there would have been action, ASAP, PDQ.

    Sound cynical? Of course. The current administration is from Chicago. That explains it all.

  2. Anon July 19, 2016 8:21 pm

    If 14 months is purgatory, what is the decades that some have been facing?

  3. Lost In Norway July 20, 2016 5:43 am

    No matter how many times I read §41.54, it seems clear that once the board makes its decision, the examiner is supposed to do what is required, “to carry into effect the decision”. How can that be misread? I have been trying to see this from the examiners point of view and I just can’t.

    MPEP 1214.04 instructs examiners to not regard “a reversal as a challenge”. But it sure looks like they do that to me. I just don’t understand how the USPTO can have such a different definition of what an appeal actually is.

    It doesn’t mean that if the applicant wins on appeal that they have to restart the process to only be rejected again. Winning an appeal should move a person past the examination phase and into the granting phase. But I’m just preaching to the choir at this point.

    Are there any time limits set out for how long after the PTAB decision that they have to start carrying through? If not, this poor applicant is going to be stalled until they give up.

  4. KenF July 20, 2016 6:42 am

    IMPORTANT NOTE: Mark Beck did NOT cooperate in any way, shape or fashion with the research or writing of this story. Neither did his attorneys or anyone at the firm that represents him. This situation was discovered through the use of public record documents. Therefore, no one at the Patent Office should feel the need to exact any degree of retribution against Beck or his attorneys.

    But you know they will…..

  5. Urko July 20, 2016 7:10 am

    Ken, google “The Chicago Way.” Explains it all — you want action, bribe someone, fast.

    And if HRC wins — expect more of the same, IMHO. Lousy job growth, more taxpayer debt.

    IMHO, she has no idea, what it takes to create great technology .. only how to grab your wallet, to keep buying off voters’ thirst for booze, dope, cigarettes, and cheeseburgers.

  6. Prizzi's Glory July 20, 2016 8:22 am

    In re #1, #5, I would prefer that issues of “Black Lives Matters” be excluded from this forum and this discussion because the USPTO anti-patent policy is important on its own while bringing up “Black Lives Matters” looks like a hijack attempt.

    For the record Obama has tended systematically to avoid black issues wherever possible. I overlapped with Obama when he was at HLS. Cynics claimed that he obtained the presidency of the Harvard Law Review because he was the “whitest black guy at the Law School”.

    I was not involved enough in Law School activities to support or to reject this judgment, but I did have the impression that Obama was immensely uninterested in issues of race, class, and technology.

    Despite this history or perhaps because of it, Obama has shown a disturbing propensity toward economic planning and picking technological winners. This apparent propensity may have strengthened an internal USPTO anti-patent clique, whose origins seem traceable at least as far back as 1995.

    As for the historical background of the issue of police treatment of African Americans, I recommend Slavery by Another Name by Blackmon.

  7. Prizzi's Glory July 20, 2016 9:08 am

    Administrative Purgatory is a longstanding practice associated with SAWS.

    Take a look at John Harvey’s 2005 Petition.

  8. GGF July 20, 2016 9:28 am

    This is a shame. He let two of his other cases go abandoned (one in Nov 2015 and the other in March 2016). His company Bridgetree provides data services and looks like a company that the US should be encouraging. Not beating down until they give up on the patent system.

  9. DJB July 20, 2016 10:11 am

    Thanks Gene for highlighting the PTAB merry-go-round. If one leaves the years long “let’s pretend” ride, one must buy a new ticket to resume riding.

    Stand alone inventor.

  10. Urko July 20, 2016 1:35 pm

    Re: #6, you must be joking. It is well-known that Chicago is 97% to one political party (guess which one). BHO’s wife’s father (a city water dept worker) was a member of that party. How convenient.

    You think, you’re not of that party, you’ll get treated fairly, including before USPTO? As USPTO is a part of Dept of Commerce, headed by a Chicagoan? That is just fantasy thinking.

    As for police statistics — attempt to read this — https://www.amazon.com/War-Cops-Attack-Order-Everyone/dp/1594038759

  11. Urko July 20, 2016 7:10 pm

    WashPost series on USPOT follies —

    https://www.washingtonpost.com/news/powerpost/wp/2016/07/20/patent-office-tktk/

    Inventors are filing an exploding number of lawsuits against companies that appropriate their products illegally — and a new report puts the blame for these costly disputes squarely at the feet of the federal government.

    The U.S. Patent and Trademark Office is so focused on rewarding its employees for the number of applications they review that the quality of patents they give out is in jeopardy, according to the Government Accountability Office.

    The result is that licenses conferring someone’s sole right to an invention are “unclear and overly broad” and vulnerable to infringement by competitors.

  12. Prizzi's Glory July 21, 2016 1:17 am

    In re #11, I don’t subscribe to the WSJ because I am impressed neither by its economic analysis nor by its editorial pages. It is fairly easy to make such articles readable by non-subscribers like me.

    The following two paragraphs constitute an obvious non sequitur.

    The U.S. Patent and Trademark Office is so focused on rewarding its employees for the number of applications they review that the quality of patents they give out is in jeopardy, according to the Government Accountability Office.

    The result is that licenses conferring someone’s sole right to an invention are “unclear and overly broad” and vulnerable to infringement by competitors.

    “…rewarding its employees for the number of applications they review…” is hardly the same as rewarding its employees for the number of claims they find allowable.

    If such is typical of the content of the article, it must be dismissed as anti-patent propaganda.

    I consider both Obama and also Pritzker clueless with respect to understanding the role of patents in the economy, but the phenomenon that Gene has identified may go back to the beginnings of the GATT patent regime in 1995. (Harvey’s petitition linked in #6 was filed during the Bush II administration.)

    It should be obvious why big capital might squeal at attempts to make it pay for poaching on other people’s IP, but from a game theoretic viewpoint even low quality patents may have some good effect in countering inherent economic tendencies toward wealth concentration.

  13. Prizzi's Glory July 21, 2016 7:24 am

    Oops! I linked John Harvey’s 511 page 2005 petition in #7.

  14. Prizzi's Glory July 21, 2016 7:28 am

    Note that the main examiner identified in the header of Harvey’s petition is Andrew I. Faile.

  15. Prizzi's Glory July 21, 2016 10:21 am

    BTW, I think even less of economic analysis in the Post than I do of that found in WSJ.

  16. Director 3600 July 23, 2016 1:40 pm

    I’m currently am a patent examiner, and as a concerned US citizen and federal employee, I wish I felt comfortable enough to tell you details how grossly inefficient my art unit is. Please understand that management is also mistreating us, its employees. There is no apparent accountability for this behavior or for the behavior towards applicants . Perhaps I can discuss more in the future only after I’m no longer a federal employee. Please do not publish any identifying information of me from this post. thank you.

  17. Did you say Sunshine? September 7, 2016 12:43 pm

    “How much longer will he have to wait too even learn whether he has earned the right to be further harassed by the reopening of prosecution?”

    Precisely 8 days. Examiner issued a new, Alice-based CTNF on July 27.

    You’re like magic sunshine.

    In one of your others in this series you listed I think 23 apps awaiting an examiner’s answer or reopening.

    Earlier today I started clicking through your list in PAIR from bottom up and (going on memory) I think at least the bottom 4 have gotten Answers, then the 5th has not, but then several more above have gotten Answers now. So I think “someone” is paying attention to your series here.

    I also looked at the history of that one Ford Motor application you mentioned having gotten re-opened twice each after two appeal briefs filed. The weird thing in that case is Ford filed a 3rd brief, (finally) got an Answer, but then Ford didn’t have it forwarded to the Board.