Public Hearings Concerning the Evolving Intellectual Property Marketplace
Evolving IP Marketplace – Comment, FTC Project No. P093900 The December 23, 2008 Federal Circuit decision in Hyatt v. Dudas has publicly exposed the fact that the USPTO, in spite of many years of public and media criticism, still continues to grossly delay, for up to thirty years from their original application filing dates, the effective examination and disposal of literally thousands of claims based on notoriously-long-total-pendency, aka "submarine," patent applications. By issuing "submarine patents" the PTO has caused, and will continue to cause, significant public economic burdens. The solution does not require legislation, rulemaking or funding. It requires a PTO management that will effectively deal with long-standing docket management and examiner supervision issues that cause this and other problems [as the Biotechnology Industry, the Chamber of Commerce and others have just urged]. This needs to be further supported by the FTC. A small but dangerous percentage of U.S. pending applications, mostly by a very few individuals, have been allowed to file multiple serial (chained) continuations and divisionals without even appropriate prosecution laches challenges by the PTO, notwithstanding Symbol Technologies, Inc. v. Lemelson (Fed. Cir. 2005), et al. This is a serious [yet easily correctable] PTO patent application examination management control problem in itself, but it is not the real cause of submarine patents. The real cause is PTO management allowing cumulative sequential months or even years of complete PTO inaction on old long-pendency applications, ignoring the true (original) filing dates of serial continuations and divisionals, instead of examining them with proper priority. Examiners are allowed to ignore work due on such submarine applications, and instead work completely out-of-order on numerous other applications having vastly later filing dates (which are normally far less important, but easier). [Applicants have an absolute response deadline.] This has gone on for many years, even with electronic dockets. No modern judicial system should tolerate such 10-30 year delays for no good reason. The recent PTO management has merely miss-addressed this problem with harmfully draconian new rules [now judicially-enjoined] full of unreasonable limitations on the entire public, rather than even trying to control either its own examiners or the few abusers of the delaying opportunities that the PTO itself has provided. The PTO has never even attempted to simply re-assign its small but dangerous number of gross-total-pendency applications to examiners who will promptly and effectively work on those applications, for adequate credit. [The PTO finally did so for patent reexaminations, to hopefully begin to address gross PTO violations of their express statutory "special dispatch" requirement for reexaminations.] The changes in patent law making patent terms nominally run twenty years from their original filing date, rather than 17 years from their issue date, do not apply to applications filed before June 8, 1995 (making their PTO processing delays particularly inexcusable). Even for applications filed or re-filed after that date, the current statute causes gross PTO delays to make patents run far longer than 20 years from their original filing date. Nor, as Hyatt v. Dudas, supra, vividly demonstrates, is there any limitation on the number or type of arguably supportable new claims that can be added to applications at any time during their entire extended pendency. Thus, new claims are routinely added to submarine applications many years after their original filing dates to specifically cover much later independently developed commercial products of others.