Time to first Office Action in PPH?

A blog reader posted this comment recently:

I’m less interested in how long it takes to get PPH decisions, and more interested in how long it takes to get a first Office Action when using PPH. It doesn’t help my client to be able to say that an application is on the PPH track. It helps my client to have an issued patent. Do you know of any data regarding this? I don’t see anything useful at https://www.uspto.gov/corda/dashboards/patents/main.dashxml

This reader is correct that the USPTO dashboard is silent on this particular delay, namely how long it takes, after the grant of a PPH petition, to receive a first Office Action.

We’ve tracked such pendency over many hundreds of PPH cases on our docket.  I’ll try to answer the reader’s question and offer some practice tips.

The first observation I can offer seems simple but comes nowhere close to characterizing the full situation for PPH at the USPTO:

In our experience, in cases that have an Examiner assigned at the time of grant of the PPH petition, the delay to first Office Action is almost always less than two months.

The reason that this is nowhere close to characterizing the full situation is, of course, that USPTO often takes an astonishingly long time to assign an Examiner to a PPH case.  And common sense tells you there is no way you are going to receive an Office Action until after an Examiner is assigned to your case.

So let’s review the sources and causes of delay in getting an Examiner assigned to your PPH case.

First of course is the delay in receiving a Filing Receipt.  The DO/EO/US office (the people in charge of handing out Filing Receipts for 371 cases) is falling further and further behind.  When we call the USPTO’s PCT Help Desk to ask why we are having to wait so long for a Filing Receipt in a particular 371 case, we get lectured to leave the Help Desk alone and not to ask until the Filing Receipt is at least six months late.

Within OPAP (that is, for cases that are not 371 cases) there is a bit of a spectrum.  We have some non-371 cases where the Filing Receipt shows up in a mere two days!  Yet we have other non-371 cases where the wait time has been a couple of months.

Until a case receives a Filing Receipt, there is no way the case is going to receive an Examiner, and thus no way that your granted PPH petition is going to get you any closer to receiving a first Office Action.

Years ago there was an unpublished policy at DO/EO/US that if a case was on the Highway, the DO/EO/US people would put that case on the top of the stack to receive a Filing Receipt.  But DO/EO/US quietly discontinued that practice.  So nowadays when we get the good news that a PPH petition has been granted, we eagerly check the status of the case and quite often what we find is that there is no way we will receive an Office Action any time soon due to foot-dragging at DO/EO/US.

Okay, suppose that on the date of the grant of the PPH petition you do already have a Filing Receipt.   Can you lean back and be confident you will soon receive an Office Action?  Not at all, because these days there is a classification backlog.  Years ago USPTO outsourced the task of classifying new applications to a government contractor.  And the contractor often takes a few weeks to carry out the classification.  Common sense tells you there is no way the USPTO will know which Art Unit to drop a PPH case into until after the contractor has said what patent class the application belongs in.  When we have a granted PPH petition on a no-yet-classified case, we docket a couple of weeks to check for the contractor doing the classification work.

Okay, so when we have a granted PPH petition and an Art Unit has been assigned to the case, surely then we can be pretty sure that an Office Action is right around the corner?  And the answer is no, not at all.  The problem is that USPTO’s standard practice in all patent applications, once the case is assigned to an Art Unit, is not to actually assign the case to an Examiner.  This sounds nuts at first until you think about it.  In an Art Unit with a pendency of more than, say, 14 months (and most art units have a pendency of more than 14 months) what absolutely does not happen is that a case gets assigned to a particular Examiner right away.  The problem that would happen if cases were routinely assigned to particular Examiners right away (after being assigned to the art unit) is that Examiners would cherry-pick cases out of their docket.  They would do easy cases first (or cases perceived as being easy) to grab counts.  This would exacerbate the problem of some cases taking forever to get examined.

So a few years ago USPTO started a practice, namely that when a case gets assigned to an art unit, it does not get assigned to an examiner at all but merely gets assigned to the SPE (supervisor) of that art unit.  The SPE then sits on all of his or her cases, doling them out to particular Examiners only after some months or years have gone by and it is time for the case to get examined given the backlog in that particular art unit.

Now your common sense would tell you, if you are a SPE and if the system tells you that a case assigned to you is on the Highway, then of course you would instantly pass that case along to an Examiner.  But in our experience, SPEs vary greatly in their diligence in this area.  We’ve been through hundreds of these PPH-stalled-at-the-SPE cases, and only in about half of these cases does the SPE do the right thing without prompting, namely to pass the case along to an Examiner.

In about half of the PPH-stalled-at-the-SPE cases, we find that we must pester the SPE to get the SPE to pass the case along to an Examiner.  Quite often the SPE is nice about it and only one email message to the SPE is required to nudge the case along.

But sometimes the SPE is (to use a technical term) a jerk about this.  And we have to go talk to the Director of the Technology Center to get our Highway case reassigned from the SPE to an Examiner.  We have to do this at least once a month.

But now back to the original point.  In a Highway case that is on the desk of an actual Examiner (as distinguished from a SPE), how long does it take to receive an Office Action?  Well it turns out that USPTO’s own case management system saves us from having to pester Examiners in such cases.  CMS will beat up the Examiner if more than two months have passed in such a case.  And so our experience is that it is quite rare to have to wait more than two months for an Office Action in a Highway case (that is on the desk of a real Examiner).

We do docket this, and in the occasional rare case we will contact an Examiner if the Examiner has had a highway case for more than two months already.  But this only very rarely happens.

Oh and the other thing about delays in PPH cases has to do with “Transfer Inquiries” (TIs).  It seems that now and again a SPE will take the view that the classification contractor made a mistake, classifying a case improperly.  The SPE will then initiate a TI.  For the TI to work, the SPE has to find some other SPE in some other art unit who is willing to agree that the case should be transferred to the art unit of that other SPE.  Well of course no SPE will want to say “yes” to this, because that just makes one’s own pendency worse.  And the SPE who is being approached with a request to take over a (supposedly) misclassified case will be suspicious and will wonder if perhaps the reason the case is being shopped around is not so much a (real or imagined) misclassification but instead simply that the case is hard work or difficult subject matter.

We have plenty of PPH cases where the Transaction History contains as many as half a dozen TIs.  That is, the SPE with a hot potato PPH case tries to pawn off the PPH case onto half a dozen other art units, without any takers.  By this point we will have made inquiry to the SPE two or three times, and maybe we will have escalated to the Director of the Tech Center.  Eventually the SPE somehow either successfully pawns off the case on some other art unit or gives up and assigns the case to someone in the SPE’s own art unit.

One wonders what the problem is that prompts such scrambling by the SPE to kick the case.  After all, this is a case that was already found patentable by a previous patent office!  Maybe there are an easy two counts in this case!  But still, we see PPH cases with half a dozen TIs in the TH.  The SPE tries so desperately to hand over those two easy counts to an Examiner in some other art unit instead of his or her own art unit.