We’ve blogged before about the ILPTO’s policy for suspending examination of patent applications. In particular we noted how its collection of fees for such suspension is ultra vires, and how a better approach, within the ILPTO’s authority, would be allow applicants to delay their response to pre-examination letters by up to 36 months instead of just 6 months, thereby effectively implementing a delayed examination scheme while legally collecting extension fees. Such an approach would allow the ILPTO to focus its resources on examining those cases that actually matter to applicants.
The ILPTO still hasn’t adopted such a scheme. But it has evidently decided to tweak the existing framework. Specifically, hitherto (at least for approximately the last 10 years), after an applicant filed its response to the ILPTO’s pre-examination letter, but before the issuance of a first OA, an applicant would request suspension of examination for X months. The ILPTO would then say, “Ok, you can have your suspension, you have one month to pay the suspension fee”. But given the lag that usually occurs between filing the pre-examination response and the issuance of a first OA – a lag that in some cases can be more than a year – it was never clear if an applicant was paying for a suspension that might have occurred anyway.
This left applicants desirous of suspension with a choice: wait to request suspension, at the risk of receiving a substantive OA which would, under the ILPTO’s policy, preclude a request that examination be suspended; or request and pay for suspension shortly after filing the pre-examination response, at the risk of paying for a suspension that would have occurred regardless.
Apparently in response to one or more complaints about this, the ILPTO decided that a change was in order. However, we learned of the change not via a “Commissioner’s Circular” letter or an ILPTO “notice” posted on the ILPTO’s web site and circulated via the ILPTO’s email distribution list, the normal channels by which this would happen. Rather, we learned about it when we recently requested suspension of an application, and received the following reply from the ILPTO (with identifying information redacted):
- We confirm receipt of your request to suspend examination of the above-referenced application from the date above.
- Your application was filed on [date of national phase entry], and the team in [technology area X] to which this application has been assigned, is presently examination applications that were filed in [month/year].
- Therefore, the suspension will take effect from the moment that the application’s turn for examination arrives, and you are requested to make payment for the suspension at that time.
- Please note: these figures and the advancement of examination in this team may be also be checked in the examination advancement file on the ILPTO’s web site, and you may avail yourselves of it.
What we gathered from this letter was that we don’t have to pay any fees just yet. But would the ILPTO warn us when the application was coming due for examination? Or was it warning us, ominously, that we need to track the examination queue ourselves – something that’s more guesswork than science, since the “examination advancement file” is only published by the ILPTO quarterly?
We tried contacting the person whose name appears on the letter, but her phone is either out of commission or permanently off the hook; and she didn’t respond to our email inquiry. So we spoke to some examiners and learned that they’ve been given as much guidance in this matter as applicants have, i.e. none. Fortunately, we spoke with the head of the team to which this application was assigned, and after discussing the matter with the ILPTO's chief examiner, the team head told us that (a) he won’t further assign this case to a specific examiner until the matter of the suspension is resolved (he doesn’t want his examiners wasting time examining worthless applications any more than our clients want to spend money prosecuting applications that eventually prove to be worthless) and (b) the chief examiner told him they’ll adjust the policy to request payment shortly before the commencement of examination, but applicants should still independently monitor the status of applications.
Assuming the ILPTO gets in the habit of sending suspension payment demand letters before examination begins, we still wonder what will happen when such a letter mistakenly isn’t sent, and an OA then issues before the applicant has paid a suspension fee – will the ILPTO still allow the applicant to pay the fee and suspend examination? Or what if the applicant decides to pay the suspension fee immediately – will the ILPTO tack on the suspension period only when the application’s turn actually comes up in the examination queue, or will it run from the date of payment, thereby possibly going to waste?
All in all, while the ILPTO is trying to achieve a desirable result, the way in which its doing so creates more work and more uncertainty for both the office and applicants. And it doesn’t resolve the problem of the office collecting fees it’s not authorized to collect. So we’ll say it again: just allow applicants to take 36 months’ extension to respond to pre-examination letters rather than 6 months. This will be less work for everyone; and it will still allow the ILPTO to collect fees, but to do so in an unquestionably legal manner.
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