I’ve written a few times on this blog about problems encountered with the USPTO’s pre-examination processing team (see e.g. here ), and have engaged in extensive discussions about these problems on Carl Oppedahl’s listservs. The main issue is that there are numerous ways in which an application can be defective, and the USPTO often does a poor job of communicating the defects. (We’ll get to why this is so in a below.) Furthermore, the Office makes it difficult if not impossible to get a straight answer about a defect that the office perceives. This can result in applicants or their attorneys wasting lots of time and money trying to comply with rules that they think they’re already complying with, until they’re finally told, clearly, what the problem is.
At the AIPLA spring meeting two weeks ago, one of the panelists, Matthew Sked of the USPTO’s Office of Patent Legal Administration, noted that on May 14, the USPTO published a notice about changes in some letters it sends out informing applicants of problems in their applications. Thus, for example, if a reply to a notice of defects is deemed to be incomplete, hitherto the Office would sometimes send out a “notice of incomplete reply” that might appear to re-set the deadline for response. Henceforth, says the notice, “The Notice of Incomplete Reply will now specify the extensions of time that remain available in the particular application and provide the last date on which a reply can be timely filed. In addition, the Notice of Incomplete Reply will now clearly state that the time period continues to run from the previous notice.”
Similarly, rather than just refuse to accept a power of attorney with a vague notation as to why – sort of a “guess what I’m thinking” game – “The Notice Regarding Power of Attorney will now clearly indicate the specific reason why the power of attorney cannot be accepted.”
The Office will now also treat regular non-provisional applications and PCT national phase application equally: where a defective reply to an earlier notice has been field, until regular applicants had two months from the initial notice to fix the problem, whereas NP applicants had the later of the original two-month deadline or one month from the mailing of the notification of defective reply. Now all applicants will have two months from the mailing of the original notice.
The Office also promises that its notices regarding defects in nucleotide or amino acid sequences listings will be more informative.
While these are certainly welcome steps, they aren’t sufficient. The Office still violates its own rules about what is required to obtain the benefit of an earlier application (it requires earlier applications to be listed in a particular order on the application data sheet, even though such a requirement isn’t found in 37 CFR, or even on the Office’s own ADS form). And as noted in a previous blog post, it sends vague notices about purported defects that ostensibly preclude the publication of applications, when in fact the Office itself has already published those exact same drawings or text.
The underlying issue, as with so many things, is one of costs. It takes some training to identify how new applications don’t comport with USPTO rules, and it takes a certain degree of intelligence and facility with English to explain to applicants what those defects are. But the USPTO doesn’t want to invest the money required in hiring people – viz. lawyers – capable of that, and it’s not willing to hire intelligent non-lawyers and train them. Instead, almost all the functions of the Office of Patent Examination Processing are outsourced to a contractor, who hires people who have not graduated from law school and who presumably are not being paid big bucks. And then the lawyers in the Office of Patent Legal Administration – a group of people who do know their stuff – draft form letters for the OPAP contract workers to use. That doesn’t always leave room for explaining a perceived defect with specificity. In other words, it’s better to externalize the cost of initial patent processing than for the office to make that process more efficient by hiring people capable of doing that job efficiently.
Let’s hope that this OG notice is a harbinger of better communication overall from OPAP.