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In response to a growing chorus of protests regarding patent validity, Congress will soon implement post-grant proceedings to make it easier to challenge the validity of patents. In doing so, however, Congress is ignoring the hurdles that applicants already face in just getting their patent applications to issue after completing examination by an examiner. In an increasing number of cases, applicants are successfully making it through examination, only to have their applications experience unusually long delays (e.g., more than a year from paying an issue fee), and, in some cases, even go abandoned due to the lack of a specific post-allowance process that keeps the applicant “in the loop.” They have paid the issue fee and filed formal drawings, been told by the examiner that their application is in the U.S. Patent and Trademark Office (PTO) publications branch, yet have no patent issued within a reasonable amount of time. Patent prosecutors work daily with applicants affected by the lack of a process for shepherding applications through the period between allowance and issue. Sometimes a simple clerical error holds things up. Sometimes, applications have bounced back and forth between the PTO publications branch and the pertinent group art unit because the notice of allowance was issued prematurely. In other cases, an application can also sit idle in the publications branch because certain papers are missing from the file. In each of these cases, the applicants spent hundreds, if not thousands, of dollars contacting the publications branch and the pertinent group art unit, investigating the status of the case and actions needed to move the allowed application to issuance. The snags, however, are not always simple to flush out. Currently, once a notice of allowance is issued by an examiner, the file moves to the publications branch. If an applicant fails to see the patent issue within a reasonable amount of time, he or she may check the PTO Patent Application Information Retrieval (PAIR) electronic database for information on the status of a case, but this often does not clarify just where, exactly, the application is. A call to the original examiner may not prove helpful, as this person is normally no longer in possession of the file and needs to put in a request to get it back for review. Then the applicant must wait to hear from the examiner and, even if a problem is found and corrected, the application goes back to the publications branch without the applicant having any idea whether the application is being placed at the back of the line for issuance or whether it will have some sort of accelerated issuance. Although there is a process to have a case expedited if it has been six months since the issue fee was paid, it is usually up to the applicant to make such a request. And although the PTO offers to extend the term of a patent to make up for internal delays, this does not provide much in the way of consolation for an applicant counting on his or her patent to be issued. The applicant may have gone ahead and ordered product and set up a business-all under the assumption that the patent would issue promptly. For applicants who have experienced such costly frustrations, knowing that Congress is about to make it easier for others to challenge the validity of their hard-won patents seems grossly unfair. A post-allowance procedure Congress should fund a PTO post-allowance procedure that would provide a detailed status to applicants of the progress of their allowed applications and a means for identifying any problems quickly to the pertinent group art unit. Such a procedure need not be burdensome, and it would keep both applicants and examiners informed until issuance. Its elements would include: The PTO would set a projected issue date, such as two months from when an applicant pays the issue fee. Any problems found by the publications branch that would delay issuance would require an alert to both the applicant and examiner. Examiners would be able to access cases without having to remove the file from the publications branch. The alerts to the applicant and the examiner could be through the PAIR system, but they would need to provide much more detail than is currently provided and the PTO would need to use language understandable by the applicant. If six months elapse and a patent has not issued, a request to expedite would automatically issue internally while informing the applicant, without the need for the applicant to get involved. A post-allowance procedure would go a long way toward improving the application process, and it should be a priority for Congress. It should be at least as, if not more, important than a post-grant proceeding to challenge patent validity. Scott M. Slomowitz is a partner at Philadelphia’s Caesar, Rivise, Bernstein, Cohen & Pokotilow, an intellectual property law firm. He can be reached at [email protected].

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