Sunday, March 4, 2012

A cautionary tale about extensions of time

I ran across an interesting post "Wait One Day, Lose Two Days " on the blog 12:01 Tuesday (a blog with interesting tidbits about just-issued patents).

The blog post is a cautionary tale about the dangers of taking extensions-of-time during prosecution of applications that have long claims to priority: an application with a priority claim back to 1999 expired before it issued, apparently due to Applicant delay.


  1. Karen,

    I agree. So many practitioners (and clients) tell me: "I don't care about PTA. The invention is obsolete a few after filing, anyway." Whenever they say that, my reaction is usually to break a pencil.

    And why are the practitioners who say "don't worry about PTA" always the same practitioners who regularly file 5 RCEs and never win appeals?

    Practitioners should study PTA if for no other reason than pure fascination. The statute and rules governing PTA are very subtle and complex - and they involve rewards for the PTO admitting error (something that always fascinates me). For example, until the PTO finalizes its new PTA rules, applicants are still obtaining ZERO PTA for every single Pre-Appeal Brief Request.

  2. Revision: ZERO PTA for every single pre-appeal that does not lead to a successful 41.50 decision.

  3. My clients care about PTA and I've busted the PTO getting it wrong several times.

    We filed 8 petitions when the PTO voluntarily recalculated PTA after Wyeth and got more PTA in all 8.

    The PTO is clearly improperly calculating PTA in cases in which a pre-appeal is filed.