Docketing PPH – chief sources of delay

What are the Best Practices for docketing PPH?  What are the chief sources of delay that the practitioner hopes to control or minimize as part of the PPH docketing process?  In this article I will try to answer these two questions.

Delay in getting the PPH petition filed.  The docket trigger here might be the instruction from the client “please get this case on the Highway”.  Or the docket trigger might be that we have seen the PCT Written Opinion and it is favorable as to all claims.  Whatever the trigger, we might then want to docket two weeks to check to make sure that we get around to actually filing the PPH petition.

Delay before petition is granted.  Of course when a PPH petition gets filed, you will want to docket to check for the USPTO deciding whether to grant or dismiss the petition.  During the past year we had often seen delays of six months or longer at the USPTO.  Bizarrely, we have very recently had some PPH petitions granted a mere three weeks after they were filed.  You might want to docket two months for this.  The followup step would be a telephone call to the Office of Patent Petitions.

If a PPH petition is dismissed.  If the petitions examiner at the USPTO dismisses a PPH petition, this is a serious matter.  You only get one month (not extendable) to clean up the mess.  This needs to be docketed aggressively.  Worse, if an Office Action shows up during this one-month period, you will be too late and will never achieve Highway status.

When a PPH petition is granted.  When a PPH petition is granted, what should we docket?  This turns out to be a question with sub-parts.  This turns out to be the complicated question, and it is the main point of this blog article.

When a PPH petition is granted, the next step should be to look in PAIR and see if we have a non-SPE Examiner.  (I will discuss the “non-SPE” point below.)  Assuming that we have a non-SPE Examiner, we should docket maybe six weeks to check for the Examiner mailing an Office Action to us.

But maybe we don’t have an Examiner listed in PAIR.  In that case there is no sense docketing to check for an Examiner mailing an Office Action because we don’t have an Examiner.  So what do we do then?  The answer is that we look to see whether we have an Art Unit.

If we have an Art Unit but no Examiner.  If we have an Art Unit but no Examiner, then the action step is to send an email to the SPE for that Art Unit.  The email asks nicely “may we please have an Examiner in this ‘special’ case?”  And then docket a week to check for the SPE giving us a non-SPE Examiner.  In our experience the SPE is usually very nice about this and assigns an Examiner within 1-2 days of our inquiry.

If we don’t have an Art Unit.  If the case is on the Highway but does not have an Art Unit, then probably the thing to do is to docket two months or so to check for the case getting an Art Unit.  If the case is a national-phase case, then you might want to phone up the PCT Help Desk at the USPTO to see if the case can be nudged along toward getting an Art Unit.  If there is some procedural issue, like a Notice of Missing Parts, then you need to get that straightened out as quickly as possible.

What’s all this talk about a “non-SPE” Examiner?  This is the chief point of this blog post.  It turns out that the practitioner who is not diligent about docketing PPH cases can lose six months or a year by failing to pay attention to the problem of a case being stalled on the desk of an SPE.  Let’s talk about this.

When a case gets assigned to an Art Unit, it does not immediately get assigned to the actual Examiner who will examine the case.  If USPTO were to assign cases straight to Examiners, then there is the risk that an Examiner would rummage through the Examiner’s docket and cherry-pick only easy cases to examine.

So what the USPTO does instead is this.  When a case gets assigned to an Art Unit, it gets assigned to the SPE (the supervisor in charge of the art unit).  And there it sits, for months or perhaps years, until the SPE gets good and ready to assign the case to an actual Examiner who will examine the case.

And that’s the evil problem that the diligent practitioner needs to try to root out through docketing.

At our firm, we have heard of cases at other firms where somebody gets a granted PPH petition and then the practitioner unfortunately snoozes for a year.  And eventually somebody (maybe the client!) asks “hey whatever happened to my case that we were trying to get onto the Highway?”  And it turns out the case has languished on the desk of a SPE for a year.

The problem here is that SPEs vary greatly from one to the next in the extent that they pay attention to granted Highway petitions.  Most SPEs are very diligent and they keep their “special” cases moving along.  But some SPEs are less diligent.

When a Highway petition gets granted, we have already talked about what we will do next so far as docketing is concerned.  We look up the case in Private PAIR to see whether the case has an Examiner.  And this is the important part — we look up to see whether the case has a non-SPE Examiner.  We do this by clicking on the Examiner’s name.  This brings up a detail page that provides the telephone number of the Examiner.  And, importantly, if the Examiner is an SPE it will say “SPE” on this detail page.

If we have a non-SPE Examiner, then as mentioned above, this is welcome news and we docket maybe six weeks to check for an Office Action.

If we have an SPE Examiner, then this is where things get rough sometimes.  What we do is contact the SPE.  This can be done by voicemail or by email.  In either case we ask nicely if we may have an Examiner.

But one SPE in particular has historically been a foot-dragger in this area.  I would for example send this particular SPE (whose family name is three letters long, you know who you are!) a nice email.  The email would list five of our cases that had been made “special” on the Highway.  Could we please have an Examiner?  A month later, still no response.  Meanwhile another PPH petition would get granted and this same SPE is on this case too.  So now we have six cases that need to have a real Examiner.

Oh and this SPE runs an art unit where the FOAP (first office action prediction) has been pegged at 60 months for the past year.  So if we can’t get this SPE to take action, it might take five years or longer for the case to get examined.

So eventually with repeated emails and voice mails we get the SPE’s attention.  And eventually the SPE gives us real Examiners for the Highway cases.  I can tell you that over the course of a year, we have by now interacted with this particular SPE on at least eighteen cases.

Oh and very interestingly does this SPE give the case to one of his own Examiners?  No!  In each case, what happens is the SPE somehow gets the case transferred to a different Art Unit.  And then we still have to watch things closely, because in two of these cases, it got assigned to a SPE in that second Art Unit rather than being assigned to a real Examiner.  So then we had to start all over again, badgering the SPE in the second Art Unit to please give us an Examiner.

So there are two main points here.  A first main point is to describe the USPTO’s practice of “parking” pending cases with SPEs.  This “parking” approach can lead to substantial delays in what should have been a prompt examination of a Highway case.

And a second main point is that if you have a case with a granted Highway petition, you may wish to carry out some fairly sophisticated docketing and status checking to keep the case moving along toward an Office Action.  Ya snooze, ya lose.

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