Long-pending Apps Hoping for Freak Allowance?

Started by mersenne, 10-07-15 at 11:32 PM

Previous topic - Next topic

mersenne

In a situation where two parties each have applications pending with disclosure and claims drawn to material that's pretty solidly 103 rejectable, but would be a PITA for one if the other happened to get claims somehow, is there any way out of the necessity for both to keep filing RCEs and prosecuting?  Neither one would likely have success on appeal, and the RCE amendments and arguments are minor and pro-forma.  It looks like both are just hoping that their examiner will blink (and/or are afraid that the other party's examiner will blink!)

I suppose one side could allege that the other's attorney was not acting in good faith based on a series of amendments and arguments, but that feels dangerous and I don't even know whether there's a mechanism to present that challenge to the PTO.

Any other way to get the PTO to put somebody else's case out of its misery?
Mersenne Law
Patents, Trademarks & Copyrights for Small Biz & Startups
California, Oregon & USPTO

NJ Patent1

Are you reppin' one of the two?  If yes, you are no more acting in good faith than is the other gal/guy.  IMO such kinds of arguments only come-up in litigation (and usu. fail).  Accepting your analysis of the situation, the only option appears to be to "poison the well" for both, if client is OK with that.  If, in spite of this attempt, the other Ex blinks an allows those other claims, you have to deal with the fallout.  These are apparently AIA apps (else you would provoke an interference)?  AIA?  Who has the earlier effective filing date?  Again, accepting your analysis of the situation, IMO the only way to put the other case out of its misery appears to be to do likewise to yours.  Any chance of a covenant not to sue agreement with the other?  Tough to prevent the Office from improvidently allowing claims w/o attendant risks. 

MYK

I'm not sure I understand the benefit to the parties;  is this just to let one party provoke an interference if the other gets a NOA?  Does the client have the earlier filing date or sufficient evidence of RTP to prevail?
"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

mersenne

Quote from: NJ Patent1 on 10-08-15 at 01:48 AM
If yes, you are no more acting in good faith than is the other gal/guy.

True, which is why "that feels dangerous!"  My guy tends to put a lot of material in applications, so we've been claiming various things (and have gotten patents from the application).  The other side seems to be focusing just on the thing that probably shouldn't be allowable/allowed, but would be inconvenient if it issued.  We have priority, so if anybody got that material, it should be us, but the applications are with different Examiners.

Re: interference, my guy once filed somebody else's exact claims in one of his apps (which had support for them), in an attempt to provoke an interference.  Didn't work.  (This was before my time, so I don't know the details.  I'd have to bring in an interference guru if it turns out that's our best bet.)

I know we have a variety of options for challenging an improvident grant to the other side (and they don't really depend on whether we keep our application pending), but they're expensive and risk making the improvidently-granted patent even stronger.  I also don't like keeping our application going through many CONs and RCEs because of the material you have to add to the FH if you're prosecuting in good faith (which, of course, I always do).

So I'd be happiest if there was a way to declare both applications to have been fully exploited, claimed and patented, and move on to the next frontier in the art.  I guess the alternative is to prosecute for 20 years plus whatever PTE you can earn, then pull the plug.

I'm starting to see some benefit to the limited-number-of-RCE proposals the PTO has floated.   But it would have to be limited in number, not merely by jacking up the price so that only well-heeled inventors can afford to keep their applications going forever.
Mersenne Law
Patents, Trademarks & Copyrights for Small Biz & Startups
California, Oregon & USPTO



www.intelproplaw.com

Terms of Use
Feel free to contact us:
Sorry, spam is killing us.

iKnight Technologies Inc.

www.intelproplaw.com