Gene Quinn & John White

Generally, the Patent Exam remains as predictable as ever in terms of what the USPTO wants you to know. The USPTO concentrates on those issues that lead to loss of rights and prejudice to your client’s situation. They want to be sure you know how to get a filing date, assert priority, respond to Office Actions, start and advance an appeal, etc. As to the post-grant procedures added by AIA Phase 2, the focus is on how they are started, timing, and thresholds of proof.

Don’t forget that as of the end of the 2011 fiscal year on September 30, 2011, the PTO has a “backfile” of nearly 679,000 patent applications that have not yet been given even a first Office Action. It will take at least 3 to 4 years, likely longer, to resolve all the patent applications currently pending. If you factor in appeals from those cases, continuation applications and requests for continued examination and we are realistically talking about 7 to 8 years for this chunk of applications to work their way through the system, with the inevitable outlier patent application that will take 10+ years thanks to multiple delaying episodes (i.e., chaining RCEs and an appeal together, for example). On top of this, we will still be filing patent applications subject to the old, first to invent system through March 15, 2013. This, as well as reexamination timeline realities (i.e., statute of limitations survives 6 years past a patent falling into the public domain), means that the “old law” will remain relevant to life at the Patent Office for quite some time.