PPH petition languishes for six months

We now have over a dozen PPH petitions that have lain untouched in the Office of Patent Petitions for more than five months, and just today our oldest untouched PPH petition entered its seventh month of pendency.  Yes, more than six months have passed since it was filed and no sign of action by the OPP.

As I mentioned in earlier blog posts here and here and here, the backlog has been getting worse and worse in the Office of Patent Petitions.  The OPP dashboard would have the reader believe that the backlog is 152 days.  In reality it is worse than 180 days.  But even if it were 152 days, that would not be a reasonable pendency.  The PPH petitions are essentially self-certified by the filer.  Very little review by USPTO personnel is actually required for such petitions.

USPTO needs to do better.

5 Replies to “PPH petition languishes for six months”

  1. Not to rub it in, but to give you an indication of how quick the PPH is in Canada, a client requested participation in the PPH and amended the claims so that they were identical to those issued in the corresponding US case. The PPH request and amendments were filed early in December 2015, and we got a notice of allowance about 1 month later. This is despite the period between the PPH request and allowance covering the end of years holidays.

    I cannot tell if this is typical as we don’t file that many PPH requests, mainly because Canadian examiner are usually more generous in term of claim breadth than US ones when obviousness is an issue. Requesting the PPH in view of the US patent is often not in the best interest of the client. The PPH was requested in this specific case as getting allowance had a big advantage in the specific situation of the client.

    1. Thank you for posting.

      As you doubtless know, historically there has always been a sort of unspoken PPH in the Canadian patent office. More than once I would hear from Canadian counsel that they had heard from the Canadian examiner that if we would just amend the Canadian claims to match the allowed US claims, we could have an allowance in Canada. I imagine that this history of unspoken PPH helps to explain the present explicit PPH.

      1. This is true, but this did not get the application out of order. Most of the time, if you amend the Canadian application so that the claims are identical to those of the corresponding US application when requesting examination and mention this in your amendment, the first action is a notice of allowance, or includes only formality issues. However, examination proceeds at its regular pace. The first action usually comes in within 6-18 months, and there is no obligation for the examiner to issue the second one quickly as in the US.

        What I found amazing is that it took 1 month to process the PPH request and for the examiner to pick up the case, do the examination (if any was done), and issue the NOA. Even if the examiner only did a quick search before allowing the case, this is really quick.

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