The Office of Patent Application Processing could be nicer to applicants. Were OPAP to do so, this would promote science and the useful arts.
Today we received a Notice of Missing Parts from OPAP
(formerly known as the Office of Initial Patent Examination). Here’s the important part of the Notice.
Now we get to go on a sort of a guessing game (or maybe we can call it a treasure hunt), trying to guess which of these six transgressions we committed.
- did we fail to hand in the filing fee on filing day?
- did we fail to hand in the search fee on filing day?
- did we fail to hand in the examination fee on filing day?
- did we fail to hand in the signed inventor’s declaration on filing day?
- did we fail to provide at least one claim on filing day?
- did we “file by reference”?
I did some digging and clicking. No, we paid all the fees on filing day. So that’s not it. We handed in an inventor’s oath or declaration. I guess that’s not it. Did we forget to upload the claims on filing day? No, we uploaded the claims on filing day, so that’s not it. Did we “file by reference”, maybe by accidentally checking the wrong box in the ADS? No, after careful scrutiny of what we filed, I concluded that this was not the explanation.
After this digging and clicking around in the file, I recalled what had happened. Instructions had come in from foreign counsel asking us to file this application. Foreign counsel had provided signed inventor declarations for two of the three inventors, and we were still waiting for for foreign counsel to provide a signed inventor declaration from the third inventor. So in this case the Notice of Missing Parts was to be expected.
But please, OPAP. How about providing six little check boxes instead of six little bullet points? How about letting the applicant know which of the six transgressions is being complained about?
It would not be so bad if it were possible to phone up the person who signed this Notice (in this case a person named “dnguyen”). But it’s impossible to do that. It is absolutely impossible to reach Mr. or Ms. Nguyen on the telephone. All that one can do is phone up the Application Assistance Unit. If you do this, you simply add another person to the guessing game. The AAU person tries to guess which of the six transgressions it is, just like you.
So how about it? Presumably at the time of preparing the Notice, Mr. or Ms. Nguyen knew perfectly well which of the six transgressions triggered the Notice. So why not redesign the form ever so slightly, providing six little check boxes? Then Mr. or Ms. Nguyen could check the relevant box. This would, in many cases, eliminate the need for the applicant to phone up the AAU. This would eliminate the time-wasting telephone call in which the AAU person joins in the guessing came as to the reason why Mr. or Ms. Nguyen mailed the Notice.
This would actually save money for the USPTO, because it would reduce the number of otherwise unnecessary and time-wasting calls to the AAU.
And this would promote science and the useful arts.
Share your experience with unhelpful Notices from OPAP. Post a comment below.
The same applies to when they reject a Power of Attorney. Instead of telling you the specific reason why it is rejected, they provide a boilerplate paragraph. If you call the AAU, the person will go into the file, pull it out, examine it, and explain the issue. If the person examining the document in the first instance would do that, it would save everyone alot ot time
It’s also required under the Paperword Reduction Act.
Public comments on this kind of thing are due at PTO by Friday, if you’re interested.
https://www.gpo.gov/fdsys/pkg/FR-2016-05-23/pdf/2016-12042.pdf
If we are already paying all the other filing fees up front, we tend to pay the late declaration filing fee at the same time so that we don’t get a Notice of Missing Parts with a 2 month return date, Instead, we get an Informational Notice to Applicant that mentions the missing declaration, but does not have a return date to docket or worry about.
If we don’t have the money in escrow/aren’t going to lay the money out to pay the filing fees up front, then we are going to get a Notice of Missing Parts anyway, so it doesn’t matter, but then when we invoice the client for the filing, we include the late fees and our fees for responding to the Missing Parts, so we don’t have to invoice them twice.
We’d had this or a similar experience on multiple occasions. Another common one is with drawings: OPAP likes to send notices saying something is defective with the drawings, but they won’t tell us what exactly is wrong. Sometimes it’s that we’ve got Figs. 7A-C, but the brief description of the drawings says “Fig. 7 shows…”. Of course, this doesn’t prevent the examiner or any other person with working gray matter from understanding the spec, but it’s too much for the OPAP people. These kinds of letters are particularly annoying when they’re sent in a continuation of a now-issued patent that contains the exact same “defect” that passed through the system without objection.
OPAP’s insistence that priority/benefit claims be listed on an ADS in a particular order, when there is no such requirement in the rules, is also beyond frustrating, particularly when their own fillable pdf file doesn’t facilitate the addition of new priority claims at the top of an existing list (which is where OPAP wants it), e.g. in an already-existing ADS for the parent case. As far as I can tell, this is actually a glitch in the software that processes those fillable pdfs – apparently it’s incapable of taking the data from the ADS and then re-ordering that data in chronological (or reverse chronological) order. So better to waste our time and our clients’ money than to improve the software or allow us to easily put the data in a format that the USPTO’s software is capable of processing.
And don’t even get me started on the problems in trying to file a supplemental or corrected ADS.
But I’ll go you one more, Carl. Where are AIPLA and IPO the ABA-IPL and the other professional groups in this? I know it’s a lot more interesting to think about substantive patent law, and we look more intelligent when we discuss things like patenting strategies in the wake of Alice and Myriad, or how the way those decisions are being implemented may destroy the development of diagnostic testing, than when we discuss how OPAP wants us to fill out forms. It’s more fun, and looks better on the resume, to have your name on an amicus brief in an en banc CAFC case or in support of a cert petition than to explain to the PTO how utterly f–ked up their procedures are and how those procedures could be improved. But these patent prosecution problems are problems that affect every single patent applicant and every single firm representing applicants, and presumably achieving greater PTO efficiency is non-controversial. Yet the professional groups stay silent. For years I’ve been suggesting inclusion of a session discussing these issues in the AIPLA fall or spring meeting, but not once has such a session been included, and when I raised these issues with the “patent relations” committee a few years ago as something the committee could address I was given the blow-off, as if fixing problems is undesirable because it will cause the PTO embarrassment.
This makes a perfect email to PTO for the Paperwork Reduction Act comment period that runs thru 7/23.
https://www.gpo.gov/fdsys/pkg/FR-2016-05-23/pdf/2016-12042.pdf
Email your comment to InformationCollection@uspto.gov, subject “0651–0031 comment”
David, thanks for pointing out that FR notice. Curiously, however, they have not asked for comments on the Application Data Sheet – not the fillable PDF, and not the form one can now fill in online. Nor have they asked for comments on the form letters sent by OPAP, which is what Carl’s post was about, and which are clearly a big problem and a source of a tremendous waste of everyone’s resources. And of course they’re not the least bit interested in hearing about structural flaws in the PTO, such as the asinine system (mentioned by Carl) under which your papers are processed by someone to whom you have no access, so that you have to speak to a different person who will guess as to what was bothering OPAP (and as often as not, you’ll get two different answers if you speak to two different people in the AAU).
I may submit comments anyway, but I’m betting those comments will be ignored because they pertain to issues beyond the scope of the FR notice.
The reason you can’t reach the people who send out the OPAP notices is because they are contractors, and the USPTO doesn’t permit contractors to talk to the public.