[Patentpractice] Number of AFCP interviews granted each year
Eli Mazour
eli at voiceofip.com
Wed May 1 22:16:59 UTC 2024
I don’t have the data re number of AFCP interviews granted but unfortunately filing an AFCP request only makes a modest difference in terms of improving chances of allowance v not filing one. But, from what I understand, an examiner gets credit for conducting an AFCP interview either way.
In case anyone is curious, below is the historical data for the different TCs.
On average, the AFCP program improves chances of allowance by only 8.7% but - as I’m sure many of you know - varies greatly between different TCs & examiners:
USPTO Tech Center
AFCP Usage
Final Rejection Allowance Rate with AFCP
Final Rejection Allowance Rate without AFCP
1600
10.7%
58.3%
40.1%
1700
13.3%
44.0%
36.6%
2100
14.4%
32.6%
21.3%
2400
18.9%
34.2%
18.2%
2600
13.5%
39.5%
30.9%
2800
13.8%
43.6%
39.6%
3600
15.4%
46.9%
37.2%
3700
16.9%
43.2%
35.3%
Total
14.6%
42.3%
33.6%
Eli
www.VoiceOfIP.com<http://www.VoiceOfIP.com>
________________________________
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of patentpractice-request at oppedahl-lists.com <patentpractice-request at oppedahl-lists.com>
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Today's Topics:
1. Re: Interesting notice from USPTO re data breach
(Katherine Koenig)
2. Number of AFCP interviews granted each year (pbrisky at fujitsu.com)
3. Re: Number of AFCP interviews granted each year (Jim Larsen)
4. Re: Number of AFCP interviews granted each year (Timothy Snowden)
5. Re: Interesting notice from USPTO re data breach (Richard Schafer)
6. Re: Number of AFCP interviews granted each year
(pbrisky at fujitsu.com)
7. Re: Number of AFCP interviews granted each year
(welched123 at gmail.com)
8. non-pub request for case claiming priority from abandoned
foreign application (Dan Feigelson)
9. Re: Number of AFCP interviews granted each year (Scott Nielson)
10. Re: Number of AFCP interviews granted each year (Katherine Koenig)
11. Re: non-pub request for case claiming priority from abandoned
foreign application (Jeffrey Semprebon)
12. Re: Number of AFCP interviews granted each year
(pbrisky at fujitsu.com)
13. Re: non-pub request for case claiming priority from abandoned
foreign application (Jeffrey Semprebon)
14. Office Action Predictions (Karen Oster)
15. Re: non-pub request for case claiming priority from abandoned
foreign application (David Boundy)
16. Re: Office Action Predictions (Karen S. Canady)
17. Re: Interesting notice from USPTO re data breach (David Boundy)
18. Re: Interesting notice from USPTO re data breach (David Boundy)
19. Re: Office Action Predictions (Jeffrey Semprebon)
20. Re: Number of AFCP interviews granted each year (Timothy Snowden)
----------------------------------------------------------------------
Message: 1
Date: Tue, 30 Apr 2024 17:06:05 +0000
From: Katherine Koenig <katherine at koenigipworks.com>
To: "For patent practitioners. This is not for laypersons to seek
legal advice." <patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] Interesting notice from USPTO re data
breach
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<BN8PR15MB31404117AD5CEAF72C47F251BC1A2 at BN8PR15MB3140.namprd15.prod.outlook.com>
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Another thing I noticed is that the communication is titled Notice of Potential Erroneous Release of Patent Application Titles.
It wasn't a potential erroneous release, it was an actual erroneous release. Someone who didn't have authorization to view it may have, but it doesn't change the fact that, through USPTO error, the titles were made public.
Best regards,
Katherine
Dr. Katherine Koenig
Registered Patent Attorney
Koenig IP Works, PLLC
2208 Mariner Dr.
Fort Lauderdale, FL 33316
(954) 903-1699
katherine at koenigipworks.com<mailto:katherine at koenigipworks.com>
[cid:image001.png at 01DA9AFF.284799D0]
Targeted Intellectual Property Strategy
The information contained in this communication, including any attachments, is privileged and confidential information intended only for the use of the individual or entity named above. If you are not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, you are hereby notified that any review, dissemination, distribution, or copying of this communication is strictly prohibited. If you have received this communication in error, do not read it. Please immediately reply to the sender that you have received this communication in error and then destroy all paper and electronic copies. Thank you.
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Patent Lawyer via Patentpractice
Sent: Monday, April 29, 2024 3:44 PM
To: Patentpractice Patentpractice <patentpractice at oppedahl-lists.com>
Cc: Patent Lawyer <patentlawyer995 at gmail.com>
Subject: Re: [Patentpractice] Interesting notice from USPTO re data breach
We should stop calling this a data breach. It was not.
The PTO notice acknowledges that it was "a computer programming error."
A data breach implies bad acts from someone outside.
Maybe there were bad actors outside. Or maybe not. I'm not sure there were any.
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of Patentpractice Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Reply-To: Patentpractice Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Date: Monday, April 29, 2024 at 2:49 PM
To: Patentpractice Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Carl Oppedahl <carl at oppedahl.com<mailto:carl at oppedahl.com>>
Subject: Re: [Patentpractice] Interesting notice from USPTO re data breach
On 4/29/2024 12:14 PM, Carl Oppedahl wrote:
On 4/29/2024 9:20 AM, Patent Lawyer via Patentpractice wrote:
Part II:
I have received at least 6 of these notices.
What should I tell my clients?
(Because I feel like writing another letter in my abundant free time!)
Here is what I wrote to one of our clients a few minutes ago ...
Subject line includes "USPTO may have revealed your application title to a third party"
Body of email includes:
Now the USPTO reveals that it may have revealed the title of your patent application to some member of the public. See the attached Notice.
Our title is "redacted". Our application is scheduled to be published on redacted, 2025. I'd guess your reaction to this would be that the title, taken alone, does not reveal the entirety of the invention. Of course the revelation of the title might nonetheless be of interest to third parties who would thereby learn that the client is innovating in this technical area.
As you may see, the USPTO commits to "confirming that the disclosure was erroneous and inadvertent".
I am not able to think of any next step for the client to do about this, other than waiting for the publication to happen around sixteen months from now.
Carl
It seems to me that the reaction to this data breach ought to be very much a matter of case-by-case consideration.
Imagine one extreme, where the case claims priority from something that has already been published. Or, similarly, the case is a US national phase of a PCT that has already been published. In such cases the revelation of the title would likely be a no harm no foul. The revelation of the application number might, nonetheless, be of concern to the extent that it might reveal filing activity by the client that would otherwise not have been known to adversaries or competitors.
Yet another element of the case-by-case analysis would be tied to the title itself. One extreme is the "tetrafluoroethylene polymers" case where the title literally reveals the invention. Another extreme is the innocuous title that reveals very little. "Method and apparatus for data transmission." "Improved cat box."
In the case quoted above, the client is player number 3 or so in a fairly small world where player number 1 has infinite amounts of money to spend on making trouble for players 2 and 3. Even the tiniest clue given to player number 1 about our client's filing activities would be unfortunate. But my situation is that I think the CIO's notice to me is a "boy who cried wolf" situation. I think it's highly likely that the CIO sent the notice to me not because any actual data logging by the USPTO revealed that some third party saw my client's invention title. I think it's highly likely that the CIO sent the notice to me for no better reason than that I recorded an assignment during the breach period.
Yet another factor for the case-by-case analysis is the position in the time line for the US pub. In the case I quoted above, the filing that I did claimed no priority and no domestic benefit. So the US pub will be sixteen months from now. It's sad to think of unnecessarily revealing something sixteen months early. On the other hand if the case you are looking at is going to be published in a week, maybe that is not so sad.
-- Patentpractice mailing list Patentpractice at oppedahl-lists.com<mailto:Patentpractice at oppedahl-lists.com> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
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Message: 2
Date: Tue, 30 Apr 2024 19:02:22 +0000
From: "pbrisky at fujitsu.com" <pbrisky at fujitsu.com>
To: Carl Oppedahl via Patentpractice
<patentpractice at oppedahl-lists.com>
Subject: [Patentpractice] Number of AFCP interviews granted each year
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<BLAPR07MB757059D39617D9764F636BF6BF1A2 at BLAPR07MB7570.namprd07.prod.outlook.com>
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Hi
The USPTO claims that 50% of all AFCP requests (out of the 60k annually) made by applicants have been granted interviews. Anecdotally this has not been our observation. I am wondering if anybody has numbers to either refute the USPTO's assertion or back it up.
Pamela Cei Brisky
Senior Patent Paralegal
Fujitsu North America, Inc.| Fujitsu Intellectual Property Center
pbrisky at fujitsu.com<mailto:pbrisky at fujitsu.com> |571-216-2112
[cid:image001.png at 01DA9B0F.465A03D0]
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Message: 3
Date: Tue, 30 Apr 2024 19:13:00 +0000
From: Jim Larsen <jim at larsen-ip.com>
To: "For patent practitioners. This is not for laypersons to seek
legal advice." <patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] Number of AFCP interviews granted each
year
Message-ID:
<MW4PR22MB31121D8E623B649D79D7DD18E81A2 at MW4PR22MB3112.namprd22.prod.outlook.com>
Content-Type: text/plain; charset="utf-8"
By definition, a proper AFCP request includes an examiner-initiated interview, if only to indicate that (at least in the majority of my experience) additional search and consideration will be required (i.e., RCE).
Fed. Reg. Vo. 78, No. 96, at 29118<https://www.govinfo.gov/content/pkg/FR-2013-05-17/pdf/2013-11870.pdf>
?If the examiner?s consideration of a proper AFCP 2.0 request and response does not result in a determination that all pending claims are in condition for allowance, the examiner will request an interview with the applicant to discuss the response.?
If you aren?t seeing interview requests from examiners, it follows that either the application was allowed or the AFCP request was improper. No?
Best regards,
-Jim
James C. Larsen
Attorney
Larsen IP PLLC
p: 425.298.6846
e: jim at Larsen-IP.com<mailto:jim at Larsen-IP.com>
w. www.Larsen-IP.com<http://www.Larsen-IP.com>
NOTICE OF CONFIDENTIALITY: The information contained in this email, including any attachments, is confidential and may be privileged. It is intended only for the use of the individual(s) or entity named herein. If the reader of this message is not the intended recipient or authorized agent, you are hereby notified that any dissemination, distribution, or copying of this communication is strictly prohibited. Unintended recipients are requested to notify the sender immediately and to permanently delete this e-mail, any attachments, and copies.
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of pbrisky--- via Patentpractice <patentpractice at oppedahl-lists.com>
Date: Tuesday, April 30, 2024 at 12:04?PM
To: Carl Oppedahl via Patentpractice <patentpractice at oppedahl-lists.com>
Cc: pbrisky at fujitsu.com <pbrisky at fujitsu.com>
Subject: [Patentpractice] Number of AFCP interviews granted each year
Hi
The USPTO claims that 50% of all AFCP requests (out of the 60k annually) made by applicants have been granted interviews. Anecdotally this has not been our observation. I am wondering if anybody has numbers to either refute the USPTO's assertion or back it up.
Pamela Cei Brisky
Senior Patent Paralegal
Fujitsu North America, Inc.| Fujitsu Intellectual Property Center
pbrisky at fujitsu.com<mailto:pbrisky at fujitsu.com> |571-216-2112
[cid:image001.png at 01DA9B0F.465A03D0]
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Message: 4
Date: Tue, 30 Apr 2024 19:13:20 +0000
From: Timothy Snowden <Timothy at thompsonpatentlaw.com>
To: "For patent practitioners. This is not for laypersons to seek
legal advice." <patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] Number of AFCP interviews granted each
year
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Hi Pamela,
Anecdotally, we are close to 100% unless we get an allowance. However, we also are proactive about requesting interviews, so sometimes we get our interview 'before' the AFCP decision (which we prefer because it gives us an opportunity to try to drive to an agreement).
Not sure if that helps you or not.
________________________________
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of pbrisky--- via Patentpractice <patentpractice at oppedahl-lists.com>
Sent: Tuesday, April 30, 2024 2:02 PM
To: Carl Oppedahl via Patentpractice <patentpractice at oppedahl-lists.com>
Cc: pbrisky at fujitsu.com <pbrisky at fujitsu.com>
Subject: [Patentpractice] Number of AFCP interviews granted each year
Hi
The USPTO claims that 50% of all AFCP requests (out of the 60k annually) made by applicants have been granted interviews. Anecdotally this has not been our observation. I am wondering if anybody has numbers to either refute the USPTO's assertion or back it up.
Pamela Cei Brisky
Senior Patent Paralegal
Fujitsu North America, Inc.| Fujitsu Intellectual Property Center
pbrisky at fujitsu.com<mailto:pbrisky at fujitsu.com> |571-216-2112
[cid:image001.png at 01DA9B0F.465A03D0]
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Message: 5
Date: Tue, 30 Apr 2024 19:20:53 +0000
From: Richard Schafer <richard at schafer-ip.com>
To: "For patent practitioners. This is not for laypersons to seek
legal advice." <patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] Interesting notice from USPTO re data
breach
Message-ID:
<SA1PR05MB7983A31F056BBC3FDB7AB68B8E1A2 at SA1PR05MB7983.namprd05.prod.outlook.com>
Content-Type: text/plain; charset="us-ascii"
I think it's titled that way because the PTO has no way to know if any erroneous release of title information occurred. As Carl has said, the PTO probably isn't logging every application number lookup made by Assignment Center, much less analyzing those lookups to see if they were for an application that the Assignment Center user wasn't authorized to access. They won't admit to their lack of knowledge directly, of course.
Best regards,
Richard A. Schafer | Schafer IP Law
P.O. Box 230081 | Houston, TX 77223
M: 832.283.6564 | richard at schafer-ip.com<mailto:richard at schafer-ip.com>
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Katherine Koenig via Patentpractice
Sent: Tuesday, April 30, 2024 12:06 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Katherine Koenig <katherine at koenigipworks.com>
Subject: Re: [Patentpractice] Interesting notice from USPTO re data breach
Another thing I noticed is that the communication is titled Notice of Potential Erroneous Release of Patent Application Titles.
It wasn't a potential erroneous release, it was an actual erroneous release. Someone who didn't have authorization to view it may have, but it doesn't change the fact that, through USPTO error, the titles were made public.
Best regards,
Katherine
Dr. Katherine Koenig
Registered Patent Attorney
Koenig IP Works, PLLC
2208 Mariner Dr.
Fort Lauderdale, FL 33316
(954) 903-1699
katherine at koenigipworks.com<mailto:katherine at koenigipworks.com>
[cid:image001.png at 01DA9B09.63A687C0]
Targeted Intellectual Property Strategy
The information contained in this communication, including any attachments, is privileged and confidential information intended only for the use of the individual or entity named above. If you are not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, you are hereby notified that any review, dissemination, distribution, or copying of this communication is strictly prohibited. If you have received this communication in error, do not read it. Please immediately reply to the sender that you have received this communication in error and then destroy all paper and electronic copies. Thank you.
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Patent Lawyer via Patentpractice
Sent: Monday, April 29, 2024 3:44 PM
To: Patentpractice Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Patent Lawyer <patentlawyer995 at gmail.com<mailto:patentlawyer995 at gmail.com>>
Subject: Re: [Patentpractice] Interesting notice from USPTO re data breach
We should stop calling this a data breach. It was not.
The PTO notice acknowledges that it was "a computer programming error."
A data breach implies bad acts from someone outside.
Maybe there were bad actors outside. Or maybe not. I'm not sure there were any.
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of Patentpractice Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Reply-To: Patentpractice Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Date: Monday, April 29, 2024 at 2:49 PM
To: Patentpractice Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Carl Oppedahl <carl at oppedahl.com<mailto:carl at oppedahl.com>>
Subject: Re: [Patentpractice] Interesting notice from USPTO re data breach
On 4/29/2024 12:14 PM, Carl Oppedahl wrote:
On 4/29/2024 9:20 AM, Patent Lawyer via Patentpractice wrote:
Part II:
I have received at least 6 of these notices.
What should I tell my clients?
(Because I feel like writing another letter in my abundant free time!)
Here is what I wrote to one of our clients a few minutes ago ...
Subject line includes "USPTO may have revealed your application title to a third party"
Body of email includes:
Now the USPTO reveals that it may have revealed the title of your patent application to some member of the public. See the attached Notice.
Our title is "redacted". Our application is scheduled to be published on redacted, 2025. I'd guess your reaction to this would be that the title, taken alone, does not reveal the entirety of the invention. Of course the revelation of the title might nonetheless be of interest to third parties who would thereby learn that the client is innovating in this technical area.
As you may see, the USPTO commits to "confirming that the disclosure was erroneous and inadvertent".
I am not able to think of any next step for the client to do about this, other than waiting for the publication to happen around sixteen months from now.
Carl
It seems to me that the reaction to this data breach ought to be very much a matter of case-by-case consideration.
Imagine one extreme, where the case claims priority from something that has already been published. Or, similarly, the case is a US national phase of a PCT that has already been published. In such cases the revelation of the title would likely be a no harm no foul. The revelation of the application number might, nonetheless, be of concern to the extent that it might reveal filing activity by the client that would otherwise not have been known to adversaries or competitors.
Yet another element of the case-by-case analysis would be tied to the title itself. One extreme is the "tetrafluoroethylene polymers" case where the title literally reveals the invention. Another extreme is the innocuous title that reveals very little. "Method and apparatus for data transmission." "Improved cat box."
In the case quoted above, the client is player number 3 or so in a fairly small world where player number 1 has infinite amounts of money to spend on making trouble for players 2 and 3. Even the tiniest clue given to player number 1 about our client's filing activities would be unfortunate. But my situation is that I think the CIO's notice to me is a "boy who cried wolf" situation. I think it's highly likely that the CIO sent the notice to me not because any actual data logging by the USPTO revealed that some third party saw my client's invention title. I think it's highly likely that the CIO sent the notice to me for no better reason than that I recorded an assignment during the breach period.
Yet another factor for the case-by-case analysis is the position in the time line for the US pub. In the case I quoted above, the filing that I did claimed no priority and no domestic benefit. So the US pub will be sixteen months from now. It's sad to think of unnecessarily revealing something sixteen months early. On the other hand if the case you are looking at is going to be published in a week, maybe that is not so sad.
-- Patentpractice mailing list Patentpractice at oppedahl-lists.com<mailto:Patentpractice at oppedahl-lists.com> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
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Message: 6
Date: Tue, 30 Apr 2024 19:31:52 +0000
From: "pbrisky at fujitsu.com" <pbrisky at fujitsu.com>
To: "For patent practitioners. This is not for laypersons to seek
legal advice." <patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] Number of AFCP interviews granted each
year
Message-ID:
<BLAPR07MB75700191E7D5366FD4F1AC4ABF1A2 at BLAPR07MB7570.namprd07.prod.outlook.com>
Content-Type: text/plain; charset="utf-8"
Thanks for the responses. I know this is a very vague question. I am just trying to find out why the USPTO states the fee impact for the AFCP program is 15 million dollars and could not find any specific data on interviews and disposals.
Pamela Cei Brisky
Senior Patent Paralegal/Docketing Manager
Fujitsu North America, Inc.
Fujitsu Intellectual Property Center
571-216-2112
pbrisky at fujitsu.com<mailto:pbrisky at fujitsu.com>
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Jim Larsen via Patentpractice
Sent: Tuesday, April 30, 2024 3:13 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Jim Larsen <jim at larsen-ip.com>
Subject: Re: [Patentpractice] Number of AFCP interviews granted each year
By definition, a proper AFCP request includes an examiner-initiated interview, if only to indicate that (at least in the majority of my experience) additional search and consideration will be required (i.e., RCE).
Fed. Reg. Vo. 78, No. 96, at 29118<https://www.govinfo.gov/content/pkg/FR-2013-05-17/pdf/2013-11870.pdf>
?If the examiner?s consideration of a proper AFCP 2.0 request and response does not result in a determination that all pending claims are in condition for allowance, the examiner will request an interview with the applicant to discuss the response.?
If you aren?t seeing interview requests from examiners, it follows that either the application was allowed or the AFCP request was improper. No?
Best regards,
-Jim
James C. Larsen
Attorney
Larsen IP PLLC
p: 425.298.6846
e: jim at Larsen-IP.com<mailto:jim at Larsen-IP.com>
w. www.Larsen-IP.com<http://www.Larsen-IP.com>
NOTICE OF CONFIDENTIALITY: The information contained in this email, including any attachments, is confidential and may be privileged. It is intended only for the use of the individual(s) or entity named herein. If the reader of this message is not the intended recipient or authorized agent, you are hereby notified that any dissemination, distribution, or copying of this communication is strictly prohibited. Unintended recipients are requested to notify the sender immediately and to permanently delete this e-mail, any attachments, and copies.
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of pbrisky--- via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Date: Tuesday, April 30, 2024 at 12:04?PM
To: Carl Oppedahl via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: pbrisky at fujitsu.com<mailto:pbrisky at fujitsu.com> <pbrisky at fujitsu.com<mailto:pbrisky at fujitsu.com>>
Subject: [Patentpractice] Number of AFCP interviews granted each year
Hi
The USPTO claims that 50% of all AFCP requests (out of the 60k annually) made by applicants have been granted interviews. Anecdotally this has not been our observation. I am wondering if anybody has numbers to either refute the USPTO's assertion or back it up.
Pamela Cei Brisky
Senior Patent Paralegal
Fujitsu North America, Inc.| Fujitsu Intellectual Property Center
pbrisky at fujitsu.com<mailto:pbrisky at fujitsu.com> |571-216-2112
[cid:image001.png at 01DA9B12.11B96410]
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Message: 7
Date: Tue, 30 Apr 2024 15:53:25 -0400
From: <welched123 at gmail.com>
To: "'For patent practitioners. This is not for laypersons to seek
legal advice.'" <patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] Number of AFCP interviews granted each
year
Message-ID: <038801da9b38$106e9f50$314bddf0$@gmail.com>
Content-Type: text/plain; charset="utf-8"
No, that?s not right! The AFCP Request can be proper; but, an interview may still not happen. Based upon my experience and, as I recall, examiner comments, the examiners have the discretion to treat the AFCP Request as an AFCP Request or an After Final Response. In the latter, they merely issue an (another) Advisory Action maintaining the Final Rejection and denying entry of the AFCP amendment. In the past several months I filed 3 AFCP Requests, one case was allowed without an interview. In the other two cases, both were treated as After Final Responses (with no mention of the AFCP Request having been filed) and rejected by way of Advisory Actions. Finally, I filed the RCEs, which is clearly what these examiners wanted, with the amendment from the AFCP Request and both cases were promptly allowed: again, no interview. Hence, the low count of interviews is a result of allowance without an interview and the failure of the examiner to consider the AFCP Request. While all three would have been included in the total counts of AFCP submission, since all were submitted that way despite not being treated as such, none of these had an interview.
Ed Welch
IP&L Solutions
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Jim Larsen via Patentpractice
Sent: Tuesday, April 30, 2024 3:13 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Jim Larsen <jim at larsen-ip.com>
Subject: Re: [Patentpractice] Number of AFCP interviews granted each year
By definition, a proper AFCP request includes an examiner-initiated interview, if only to indicate that (at least in the majority of my experience) additional search and consideration will be required (i.e., RCE).
Fed. Reg. Vo. 78, No. 96, at 29118 <https://www.govinfo.gov/content/pkg/FR-2013-05-17/pdf/2013-11870.pdf>
?If the examiner?s consideration of a proper AFCP 2.0 request and response does not result in a determination that all pending claims are in condition for allowance, the examiner will request an interview with the applicant to discuss the response.?
If you aren?t seeing interview requests from examiners, it follows that either the application was allowed or the AFCP request was improper. No?
Best regards,
-Jim
James C. Larsen
Attorney
Larsen IP PLLC
p: 425.298.6846
e: jim at Larsen-IP.com <mailto:jim at Larsen-IP.com>
w. www.Larsen-IP.com<http://www.Larsen-IP.com> <http://www.Larsen-IP.com>
NOTICE OF CONFIDENTIALITY: The information contained in this email, including any attachments, is confidential and may be privileged. It is intended only for the use of the individual(s) or entity named herein. If the reader of this message is not the intended recipient or authorized agent, you are hereby notified that any dissemination, distribution, or copying of this communication is strictly prohibited. Unintended recipients are requested to notify the sender immediately and to permanently delete this e-mail, any attachments, and copies.
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com <mailto:patentpractice-bounces at oppedahl-lists.com> > on behalf of pbrisky--- via Patentpractice <patentpractice at oppedahl-lists.com <mailto:patentpractice at oppedahl-lists.com> >
Date: Tuesday, April 30, 2024 at 12:04?PM
To: Carl Oppedahl via Patentpractice <patentpractice at oppedahl-lists.com <mailto:patentpractice at oppedahl-lists.com> >
Cc: pbrisky at fujitsu.com <mailto:pbrisky at fujitsu.com> <pbrisky at fujitsu.com <mailto:pbrisky at fujitsu.com> >
Subject: [Patentpractice] Number of AFCP interviews granted each year
Hi
The USPTO claims that 50% of all AFCP requests (out of the 60k annually) made by applicants have been granted interviews. Anecdotally this has not been our observation. I am wondering if anybody has numbers to either refute the USPTO's assertion or back it up.
Pamela Cei Brisky
Senior Patent Paralegal
Fujitsu North America, Inc.| Fujitsu Intellectual Property Center
<mailto:pbrisky at fujitsu.com> pbrisky at fujitsu.com |571-216-2112
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Message: 8
Date: Tue, 30 Apr 2024 23:12:10 +0300
From: "Dan Feigelson" <djf at iliplaw.com>
To: "For patent practitioners. This is not for laypersons to seek
legal advice." <patentpractice at oppedahl-lists.com>
Subject: [Patentpractice] non-pub request for case claiming priority
from abandoned foreign application
Message-ID:
<df78b9e6-f354-4772-a5a2-e5cbe587b64a at smtp-relay.sendinblue.com>
Content-Type: text/plain; charset="utf-8"
Applicant filed first application in Israel, and plans to file in the US
and only in the US claiming priority from the Israel application.
Israel is an 18-month-from-earliest-priority-publication country, so this
set of facts would preclude filing a non-publication request at the USPTO.
But what if the applicant abandons its Israel application before
publication? In that circumstance, can the applicant properly make a
non-pub request in the US case?
The way 35 USC 122 is worded, the answer seems to be no:
122(b)(B))(i) If an applicant makes a request upon filing, certifying that
the invention disclosed in the application has not and will not be the
subject of an application filed in another country, or under a multilateral
international agreement, that requires publication of applications 18
months after filing, the application shall not be published as provided in
paragraph (1).
I think the straightforward reading of that paragraph is that it's not a
question of whether or not the application filed abroad actually publishes,
but whether or not the law in the country where the application was filed
provides 18-month publication of applications. And Israel certainly fits
that bill.
I suppose one could take the position that the country in question
doesn't *require
*publication of applications at 18 months unless those applications are
still pending, and therefore the invention disclosed was not "the subject
of an application filed in another country...that requires publication of
applications 18 months after filing" since the foreign application was
abandoned.
But I wouldn't want to be the guinea pig to find out what the PTO or the
courts say about it. And making a non-pub request in an application that
claims foreign priority from an application filed in an 18-month
publication country is begging the PTO to call out the filer on this.
Dan
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Message: 9
Date: Tue, 30 Apr 2024 20:25:05 +0000
From: Scott Nielson <scnielson at outlook.com>
To: "'For patent practitioners. This is not for laypersons to seek
legal advice.'" <patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] Number of AFCP interviews granted each
year
Message-ID:
<SJ0PR11MB65756559EC3C2C828B517752B01A2 at SJ0PR11MB6575.namprd11.prod.outlook.com>
Content-Type: text/plain; charset="utf-8"
I'm starting to think AFCP requests are a scam. I always file them when taking claims deemed allowable in an office action even though it's not required. I do it because I want to do the examiner a favor (an AFCP request gives the examiner half a count or something like that).
However, if an AFCP does not result in an allowance, then the examiner rarely conducts an interview anymore. The examiner just treats it like an after final request and waits for me to file an RCE to get even more counts.
I think the USPTO is picking up on how the AFCP program is being abused by examiners to generate counts without any extra effort on the examiner's part, which is why it wants to get rid of the program in the most recent fee setting proposal (I think that's where I saw it).
Scott Nielson
801-660-4400
________________________________
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Ed Welch via Patentpractice <patentpractice at oppedahl-lists.com>
Sent: Tuesday, April 30, 2024 1:53 PM
To: 'For patent practitioners. This is not for laypersons to seek legal advice.' <patentpractice at oppedahl-lists.com>
Cc: welched123 at gmail.com <welched123 at gmail.com>
Subject: Re: [Patentpractice] Number of AFCP interviews granted each year
No, that?s not right! The AFCP Request can be proper; but, an interview may still not happen. Based upon my experience and, as I recall, examiner comments, the examiners have the discretion to treat the AFCP Request as an AFCP Request or an After Final Response. In the latter, they merely issue an (another) Advisory Action maintaining the Final Rejection and denying entry of the AFCP amendment. In the past several months I filed 3 AFCP Requests, one case was allowed without an interview. In the other two cases, both were treated as After Final Responses (with no mention of the AFCP Request having been filed) and rejected by way of Advisory Actions. Finally, I filed the RCEs, which is clearly what these examiners wanted, with the amendment from the AFCP Request and both cases were promptly allowed: again, no interview. Hence, the low count of interviews is a result of allowance without an interview and the failure of the examiner to consider the AFCP Request. While all three would have been included in the total counts of AFCP submission, since all were submitted that way despite not being treated as such, none of these had an interview.
Ed Welch
IP&L Solutions
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Jim Larsen via Patentpractice
Sent: Tuesday, April 30, 2024 3:13 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Jim Larsen <jim at larsen-ip.com>
Subject: Re: [Patentpractice] Number of AFCP interviews granted each year
By definition, a proper AFCP request includes an examiner-initiated interview, if only to indicate that (at least in the majority of my experience) additional search and consideration will be required (i.e., RCE).
Fed. Reg. Vo. 78, No. 96, at 29118<https://www.govinfo.gov/content/pkg/FR-2013-05-17/pdf/2013-11870.pdf>
?If the examiner?s consideration of a proper AFCP 2.0 request and response does not result in a determination that all pending claims are in condition for allowance, the examiner will request an interview with the applicant to discuss the response.?
If you aren?t seeing interview requests from examiners, it follows that either the application was allowed or the AFCP request was improper. No?
Best regards,
-Jim
James C. Larsen
Attorney
Larsen IP PLLC
p: 425.298.6846
e: jim at Larsen-IP.com<mailto:jim at Larsen-IP.com>
w. www.Larsen-IP.com<http://www.larsen-ip.com/>
NOTICE OF CONFIDENTIALITY: The information contained in this email, including any attachments, is confidential and may be privileged. It is intended only for the use of the individual(s) or entity named herein. If the reader of this message is not the intended recipient or authorized agent, you are hereby notified that any dissemination, distribution, or copying of this communication is strictly prohibited. Unintended recipients are requested to notify the sender immediately and to permanently delete this e-mail, any attachments, and copies.
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of pbrisky--- via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Date: Tuesday, April 30, 2024 at 12:04?PM
To: Carl Oppedahl via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: pbrisky at fujitsu.com<mailto:pbrisky at fujitsu.com> <pbrisky at fujitsu.com<mailto:pbrisky at fujitsu.com>>
Subject: [Patentpractice] Number of AFCP interviews granted each year
Hi
The USPTO claims that 50% of all AFCP requests (out of the 60k annually) made by applicants have been granted interviews. Anecdotally this has not been our observation. I am wondering if anybody has numbers to either refute the USPTO's assertion or back it up.
Pamela Cei Brisky
Senior Patent Paralegal
Fujitsu North America, Inc.| Fujitsu Intellectual Property Center
pbrisky at fujitsu.com<mailto:pbrisky at fujitsu.com> |571-216-2112
[cid:image001.jpg at 01DA9B16.88E51030]
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------------------------------
Message: 10
Date: Tue, 30 Apr 2024 20:28:42 +0000
From: Katherine Koenig <katherine at koenigipworks.com>
To: "For patent practitioners. This is not for laypersons to seek
legal advice." <patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] Number of AFCP interviews granted each
year
Message-ID:
<BN8PR15MB31404160A206682166AB0784BC1A2 at BN8PR15MB3140.namprd15.prod.outlook.com>
Content-Type: text/plain; charset="utf-8"
That?s been my experience in the majority of cases as well ? if the AAF and AFCP doesn?t result in allowance, there?s no interview granted. I seem to remember that interviews were almost always granted, and it was very helpful to hear the Examiner?s position before filing an RCE.
Best regards,
Katherine
Dr. Katherine Koenig
Registered Patent Attorney
Koenig IP Works, PLLC
2208 Mariner Dr.
Fort Lauderdale, FL 33316
(954) 903-1699
katherine at koenigipworks.com<mailto:katherine at koenigipworks.com>
[cid:image002.png at 01DA9B1B.761E4B10]
Targeted Intellectual Property Strategy
The information contained in this communication, including any attachments, is privileged and confidential information intended only for the use of the individual or entity named above. If you are not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, you are hereby notified that any review, dissemination, distribution, or copying of this communication is strictly prohibited. If you have received this communication in error, do not read it. Please immediately reply to the sender that you have received this communication in error and then destroy all paper and electronic copies. Thank you.
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Scott Nielson via Patentpractice
Sent: Tuesday, April 30, 2024 4:25 PM
To: 'For patent practitioners. This is not for laypersons to seek legal advice.' <patentpractice at oppedahl-lists.com>
Cc: Scott Nielson <scnielson at outlook.com>
Subject: Re: [Patentpractice] Number of AFCP interviews granted each year
I'm starting to think AFCP requests are a scam. I always file them when taking claims deemed allowable in an office action even though it's not required. I do it because I want to do the examiner a favor (an AFCP request gives the examiner half a count or something like that).
However, if an AFCP does not result in an allowance, then the examiner rarely conducts an interview anymore. The examiner just treats it like an after final request and waits for me to file an RCE to get even more counts.
I think the USPTO is picking up on how the AFCP program is being abused by examiners to generate counts without any extra effort on the examiner's part, which is why it wants to get rid of the program in the most recent fee setting proposal (I think that's where I saw it).
Scott Nielson
801-660-4400
________________________________
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of Ed Welch via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Sent: Tuesday, April 30, 2024 1:53 PM
To: 'For patent practitioners. This is not for laypersons to seek legal advice.' <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: welched123 at gmail.com<mailto:welched123 at gmail.com> <welched123 at gmail.com<mailto:welched123 at gmail.com>>
Subject: Re: [Patentpractice] Number of AFCP interviews granted each year
No, that?s not right! The AFCP Request can be proper; but, an interview may still not happen. Based upon my experience and, as I recall, examiner comments, the examiners have the discretion to treat the AFCP Request as an AFCP Request or an After Final Response. In the latter, they merely issue an (another) Advisory Action maintaining the Final Rejection and denying entry of the AFCP amendment. In the past several months I filed 3 AFCP Requests, one case was allowed without an interview. In the other two cases, both were treated as After Final Responses (with no mention of the AFCP Request having been filed) and rejected by way of Advisory Actions. Finally, I filed the RCEs, which is clearly what these examiners wanted, with the amendment from the AFCP Request and both cases were promptly allowed: again, no interview. Hence, the low count of interviews is a result of allowance without an interview and the failure of the examiner to consider the AFCP Request. While all three would have been included in the total counts of AFCP submission, since all were submitted that way despite not being treated as such, none of these had an interview.
Ed Welch
IP&L Solutions
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Jim Larsen via Patentpractice
Sent: Tuesday, April 30, 2024 3:13 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Jim Larsen <jim at larsen-ip.com<mailto:jim at larsen-ip.com>>
Subject: Re: [Patentpractice] Number of AFCP interviews granted each year
By definition, a proper AFCP request includes an examiner-initiated interview, if only to indicate that (at least in the majority of my experience) additional search and consideration will be required (i.e., RCE).
Fed. Reg. Vo. 78, No. 96, at 29118<https://www.govinfo.gov/content/pkg/FR-2013-05-17/pdf/2013-11870.pdf>
?If the examiner?s consideration of a proper AFCP 2.0 request and response does not result in a determination that all pending claims are in condition for allowance, the examiner will request an interview with the applicant to discuss the response.?
If you aren?t seeing interview requests from examiners, it follows that either the application was allowed or the AFCP request was improper. No?
Best regards,
-Jim
James C. Larsen
Attorney
Larsen IP PLLC
p: 425.298.6846
e: jim at Larsen-IP.com<mailto:jim at Larsen-IP.com>
w. www.Larsen-IP.com<http://www.larsen-ip.com/>
NOTICE OF CONFIDENTIALITY: The information contained in this email, including any attachments, is confidential and may be privileged. It is intended only for the use of the individual(s) or entity named herein. If the reader of this message is not the intended recipient or authorized agent, you are hereby notified that any dissemination, distribution, or copying of this communication is strictly prohibited. Unintended recipients are requested to notify the sender immediately and to permanently delete this e-mail, any attachments, and copies.
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of pbrisky--- via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Date: Tuesday, April 30, 2024 at 12:04?PM
To: Carl Oppedahl via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: pbrisky at fujitsu.com<mailto:pbrisky at fujitsu.com> <pbrisky at fujitsu.com<mailto:pbrisky at fujitsu.com>>
Subject: [Patentpractice] Number of AFCP interviews granted each year
Hi
The USPTO claims that 50% of all AFCP requests (out of the 60k annually) made by applicants have been granted interviews. Anecdotally this has not been our observation. I am wondering if anybody has numbers to either refute the USPTO's assertion or back it up.
Pamela Cei Brisky
Senior Patent Paralegal
Fujitsu North America, Inc.| Fujitsu Intellectual Property Center
pbrisky at fujitsu.com<mailto:pbrisky at fujitsu.com> |571-216-2112
[cid:image003.jpg at 01DA9B1B.761E4B10]
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Message: 11
Date: Tue, 30 Apr 2024 16:31:32 -0400
From: Jeffrey Semprebon <jesemprebon at gmail.com>
To: "For patent practitioners. This is not for laypersons to seek
legal advice." <patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] non-pub request for case claiming
priority from abandoned foreign application
Message-ID:
<CAO06ByfSuaBVF8yDArH0TMWiUqECEn79DUmKZmKrYq=Fin7r7A at mail.gmail.com>
Content-Type: text/plain; charset="utf-8"
Seems that any ambiguity in interpretation prevents signing the
certification. One might take the position that Israel doesn't require
publication, but can one CERTIFY that it doesn't? Just looks like asking
for unnecessary trouble.
-Jeff
Jeffrey E. Semprebon
Semprebon Patent Services
www.semprebonps.com<http://www.semprebonps.com>
72 Myrtle Street
Claremont, New Hampshire 03743
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Message: 12
Date: Tue, 30 Apr 2024 20:33:07 +0000
From: "pbrisky at fujitsu.com" <pbrisky at fujitsu.com>
To: "For patent practitioners. This is not for laypersons to seek
legal advice." <patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] Number of AFCP interviews granted each
year
Message-ID:
<BLAPR07MB757081571462C656D9BC4B50BF1A2 at BLAPR07MB7570.namprd07.prod.outlook.com>
Content-Type: text/plain; charset="utf-8"
I think they are saying that they will base their decision on renewal of the Pilot on the outcome of their fee extortion campaign.
Pamela Cei Brisky
Senior Patent Paralegal/Docketing Manager
Fujitsu North America, Inc.
Fujitsu Intellectual Property Center
571-216-2112
pbrisky at fujitsu.com<mailto:pbrisky at fujitsu.com>
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Scott Nielson via Patentpractice
Sent: Tuesday, April 30, 2024 4:25 PM
To: 'For patent practitioners. This is not for laypersons to seek legal advice.' <patentpractice at oppedahl-lists.com>
Cc: Scott Nielson <scnielson at outlook.com>
Subject: Re: [Patentpractice] Number of AFCP interviews granted each year
I'm starting to think AFCP requests are a scam. I always file them when taking claims deemed allowable in an office action even though it's not required. I do it because I want to do the examiner a favor (an AFCP request gives the examiner half a count or something like that).
However, if an AFCP does not result in an allowance, then the examiner rarely conducts an interview anymore. The examiner just treats it like an after final request and waits for me to file an RCE to get even more counts.
I think the USPTO is picking up on how the AFCP program is being abused by examiners to generate counts without any extra effort on the examiner's part, which is why it wants to get rid of the program in the most recent fee setting proposal (I think that's where I saw it).
Scott Nielson
801-660-4400
________________________________
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of Ed Welch via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Sent: Tuesday, April 30, 2024 1:53 PM
To: 'For patent practitioners. This is not for laypersons to seek legal advice.' <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: welched123 at gmail.com<mailto:welched123 at gmail.com> <welched123 at gmail.com<mailto:welched123 at gmail.com>>
Subject: Re: [Patentpractice] Number of AFCP interviews granted each year
No, that?s not right! The AFCP Request can be proper; but, an interview may still not happen. Based upon my experience and, as I recall, examiner comments, the examiners have the discretion to treat the AFCP Request as an AFCP Request or an After Final Response. In the latter, they merely issue an (another) Advisory Action maintaining the Final Rejection and denying entry of the AFCP amendment. In the past several months I filed 3 AFCP Requests, one case was allowed without an interview. In the other two cases, both were treated as After Final Responses (with no mention of the AFCP Request having been filed) and rejected by way of Advisory Actions. Finally, I filed the RCEs, which is clearly what these examiners wanted, with the amendment from the AFCP Request and both cases were promptly allowed: again, no interview. Hence, the low count of interviews is a result of allowance without an interview and the failure of the examiner to consider the AFCP Request. While all three would have been included in the total counts of AFCP submission, since all were submitted that way despite not being treated as such, none of these had an interview.
Ed Welch
IP&L Solutions
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Jim Larsen via Patentpractice
Sent: Tuesday, April 30, 2024 3:13 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Jim Larsen <jim at larsen-ip.com<mailto:jim at larsen-ip.com>>
Subject: Re: [Patentpractice] Number of AFCP interviews granted each year
By definition, a proper AFCP request includes an examiner-initiated interview, if only to indicate that (at least in the majority of my experience) additional search and consideration will be required (i.e., RCE).
Fed. Reg. Vo. 78, No. 96, at 29118<https://www.govinfo.gov/content/pkg/FR-2013-05-17/pdf/2013-11870.pdf>
?If the examiner?s consideration of a proper AFCP 2.0 request and response does not result in a determination that all pending claims are in condition for allowance, the examiner will request an interview with the applicant to discuss the response.?
If you aren?t seeing interview requests from examiners, it follows that either the application was allowed or the AFCP request was improper. No?
Best regards,
-Jim
James C. Larsen
Attorney
Larsen IP PLLC
p: 425.298.6846
e: jim at Larsen-IP.com<mailto:jim at Larsen-IP.com>
w. www.Larsen-IP.com<http://www.larsen-ip.com/>
NOTICE OF CONFIDENTIALITY: The information contained in this email, including any attachments, is confidential and may be privileged. It is intended only for the use of the individual(s) or entity named herein. If the reader of this message is not the intended recipient or authorized agent, you are hereby notified that any dissemination, distribution, or copying of this communication is strictly prohibited. Unintended recipients are requested to notify the sender immediately and to permanently delete this e-mail, any attachments, and copies.
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of pbrisky--- via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Date: Tuesday, April 30, 2024 at 12:04?PM
To: Carl Oppedahl via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: pbrisky at fujitsu.com<mailto:pbrisky at fujitsu.com> <pbrisky at fujitsu.com<mailto:pbrisky at fujitsu.com>>
Subject: [Patentpractice] Number of AFCP interviews granted each year
Hi
The USPTO claims that 50% of all AFCP requests (out of the 60k annually) made by applicants have been granted interviews. Anecdotally this has not been our observation. I am wondering if anybody has numbers to either refute the USPTO's assertion or back it up.
Pamela Cei Brisky
Senior Patent Paralegal
Fujitsu North America, Inc.| Fujitsu Intellectual Property Center
pbrisky at fujitsu.com<mailto:pbrisky at fujitsu.com> |571-216-2112
[cid:image001.jpg at 01DA9B1C.14759250]
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Message: 13
Date: Tue, 30 Apr 2024 16:34:55 -0400
From: Jeffrey Semprebon <jesemprebon at gmail.com>
To: "For patent practitioners. This is not for laypersons to seek
legal advice." <patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] non-pub request for case claiming
priority from abandoned foreign application
Message-ID:
<CAO06ByctXM2Z4odPam0UV0PqfDArZg4QP2TNTT++kMSJAGEQHA at mail.gmail.com>
Content-Type: text/plain; charset="utf-8"
Real concern probably isn't that the USPTO will call out the Applicant on
this. More serious issue is if the USPTO doesn't catch it, and the issue is
first raised by an accused infringer in litigation. Seems awfully easy for
them to point the court at that language and point at Israel's 18-month
publication rule. Good luck arguing "It doesn't actually count if the
application isn't pending."
-Jeff
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Message: 14
Date: Tue, 30 Apr 2024 21:44:24 +0000
From: Karen Oster <karen at kdopatent.com>
To: "For patent practitioners. This is not for laypersons to seek
legal advice." <patentpractice at oppedahl-lists.com>
Subject: [Patentpractice] Office Action Predictions
Message-ID:
<SJ0PR20MB42641CC15CCEC0E7D20B2BD0BC1A2 at SJ0PR20MB4264.namprd20.prod.outlook.com>
Content-Type: text/plain; charset="utf-8"
My assistant spoke to the Applications Assistance Unit this morning. Apparently, office action prediction letters are no longer available and the First Office Action Estimator tool is disabled permanently. (Not that either of these were particularly reliable.) Also, the estimates by Technology Centers in the Official Gazette (https://www.uspto.gov/learning-and-resources/official-gazette/official-gazette-notices-2024) appear to be obsolete.
If you want any idea about when you can expect an Office Action, you can call the Case Resolution team at 571-272-1720 and supposedly they can give you a timeline. My assistant tried calling and got voicemail.
Does anyone have any other ideas of where to get this information? Has anyone had any success with the Case Resolution team?
Karen Dana Oster
www.oregonpatent.com<http://www.oregonpatent.com><http://www.oregonpatent.com<http://www.oregonpatent.com>>
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Message: 15
Date: Tue, 30 Apr 2024 22:34:06 -0400
From: David Boundy <DavidBoundyEsq at gmail.com>
To: "For patent practitioners. This is not for laypersons to seek
legal advice." <patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] non-pub request for case claiming
priority from abandoned foreign application
Message-ID:
<CAJwugqHa07MM2ynqpV+5rf8ArGAgWvh_G20resYERTO_4wKm0g at mail.gmail.com>
Content-Type: text/plain; charset="utf-8"
Jeff's observation is sound.
This is something that constantly bugs me when my client buys patents, when
I look at file histories, etc.. Too many patent attorneys take care of
anything that the examiner raises, and then go to sleep. There are LOTS
of kinds of stuff that examiners DON'T raise... YOU have to pay attention
to them, and make sure they won't blow up in litigation. Counsel for
defendant will be looking for little picky stuff in the assignment, in the
benefit claim, in the foreign filing license, not in the IDS, etc etc. If
you lay the landmine for yourself, defense counsel will find it and
detonate it and take off your leg with it. Don't trust examiners to find
stuff like this tension between a priority claim and a nonpub request.
Can you tell what I spent half the day on?
On Tue, Apr 30, 2024 at 4:35?PM Jeffrey Semprebon via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:
> Real concern probably isn't that the USPTO will call out the Applicant on
> this. More serious issue is if the USPTO doesn't catch it, and the issue is
> first raised by an accused infringer in litigation. Seems awfully easy for
> them to point the court at that language and point at Israel's 18-month
> publication rule. Good luck arguing "It doesn't actually count if the
> application isn't pending."
>
> -Jeff
> --
> Patentpractice mailing list
> Patentpractice at oppedahl-lists.com
>
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>
--
<https://www.iam-media.com/strategy300/individuals/david-boundy>
*David Boundy *| Partner | Potomac Law Group, PLLC
P.O. Box 590638, Newton, MA 02459
Tel (646) 472-9737 | Fax: (202) 318-7707
*dboundy at potomaclaw.com <dboundy at potomaclaw.com>* | *www.potomaclaw.com
<http://www.potomaclaw.com>*
Articles at http://ssrn.com/author=2936470 <http://ssrn.com/author=2936470>
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Message: 16
Date: Wed, 1 May 2024 02:39:31 +0000
From: "Karen S. Canady" <karen at canadylortz.com>
To: "For patent practitioners. This is not for laypersons to seek
legal advice." <patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] Office Action Predictions
Message-ID:
<PH8PR20MB5195CE69C931401C65C437EBA9192 at PH8PR20MB5195.namprd20.prod.outlook.com>
Content-Type: text/plain; charset="utf-8"
I have a divisional application filed 2 years ago that the client wanted to monitor (in order to contact the examiner once it was assigned). The first action prediction letters started out saying 7 months (in June 2022), then it shifted to 6 months (August 2022), then 5 months (May 2023). The last time I checked was in October 2023, still at ?5 months?. Almost 7 months after that last check, still no action, no examiner assigned to the case.
I would assume that calling the Case Resolution Team would be the same, but perhaps I?m wrong. It seems they have no ability to predict these.
Karen S. Canady, Ph.D., Esq. | Partner
canady + lortz LLP<http://www.canadylortz.com/>
3435 Wilshire Blvd. Suite 1400
Los Angeles, CA 90010
T: 310.482.1360 (mobile)
T: 310.966.9400 (office)
F: 909.494.4441
karen at canadylortz.com<mailto:karen at canadylortz.com>
www.canadylortz.com<http://www.canadylortz.com/>
Confidentiality Notice: This message is being sent by or on behalf of a lawyer. It is intended exclusively for the individual or entity to which it is addressed. This communication may contain information that is proprietary, privileged or confidential, or otherwise legally exempt from disclosure. If you are not the named addressee, you may not read, print, retain, copy, or disseminate this message or any part. If you have received this message in error, please notify the sender immediately by e-mail and delete all copies of the message.
Ask me about the Foundation for Advancement of Diversity in IP Law
[cid:image001.png at 01DA9B36.1E8CE3A0]<https://diversityiniplaw.org/>
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Karen Oster via Patentpractice
Sent: Tuesday, April 30, 2024 2:44 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Karen Oster <karen at kdopatent.com>
Subject: [Patentpractice] Office Action Predictions
My assistant spoke to the Applications Assistance Unit this morning. Apparently, office action prediction letters are no longer available and the First Office Action Estimator tool is disabled permanently. (Not that either of these were particularly reliable.) Also, the estimates by Technology Centers in the Official Gazette (https://www.uspto.gov/learning-and-resources/official-gazette/official-gazette-notices-2024) appear to be obsolete.
If you want any idea about when you can expect an Office Action, you can call the Case Resolution team at 571-272-1720 and supposedly they can give you a timeline. My assistant tried calling and got voicemail.
Does anyone have any other ideas of where to get this information? Has anyone had any success with the Case Resolution team?
Karen Dana Oster
www.oregonpatent.com<http://www.oregonpatent.com><http://www.oregonpatent.com<http://www.oregonpatent.com>>
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Message: 17
Date: Wed, 1 May 2024 07:47:58 -0400
From: David Boundy <DavidBoundyEsq at gmail.com>
To: "For patent practitioners. This is not for laypersons to seek
legal advice." <patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] Interesting notice from USPTO re data
breach
Message-ID:
<CAJwugqEwpwiYLBTGdEOUUeO7LJZjOBj2WRcz63-vJ9ZV6rxo6g at mail.gmail.com>
Content-Type: text/plain; charset="utf-8"
*Question 1.* Do I recall that this is the second such data breach in the
last year? Can someone remind me of what the first one is, so we can
write a letter to Vidal and the Inspector General complaining of a *pattern*
instead of a single instance?
*Question 2.* Here's a draft letter -- any refinements?
Dear [client]:
The attached letter from the U.S. Patent Office explains a data breach into
the Patent Office's computer systems. Our conclusion is that the risk is
minimal, and nothing can be done.
Because of a bug in the PTO's software, the serial numbers and titles of
patent applications that should have been maintained confidential may have
been exposed to unauthorized third parties. This is not the typical kind
of data breach involving an external attacker; this is a programming bug in
which the Patent Office mis-set the switches to protect data that should
have been protected. As the Patent Office describes it, the breach is
likely small ? it would only have occurred when a third party made
a database query that would have included your patent application, and the
data exposed would only have been the serial number and title of the patent
application, not the remainder of the content. The Patent Office's access
logging does not record who looked at what when, so there is no way to know
whether any of your applications are among those exposed, and if so, to
whom.
The Patent Office's letter explains that the breach was open from February
5 to March 29. The letter explains that the Patent Office's testing did
not detect or confirm the error until March 28, and the breach was closed
March 29. The letter explains that the Patent Office is "committed to data
security" but this is the second such data breach in the last year.
The only likely situation in which we could see genuine harm is where the
title reveals the invention, for example, where the title names a specific
compound and its treatment indication. If you believe there could be harm
in revealing the title of any of your specific patent applications, the PTO
offers that "the USPTO will assist applicants by confirming that the the
disclosure was erroneous and inadvertent."
On Sun, Apr 28, 2024 at 5:40?AM Dan Feigelson via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:
> I got the following in one of my cases. Supposedly posted yesterday
> (Saturday, April 27)
>
> *Notice of Potential Erroneous Release of Patent Application Titles*
>
> On February 5, 2024, the United States Patent and Trademark Office
> (USPTO), replaced the Electronic Patent Assignment System (EPAS) and
> Electronic Trademark Assignment System (ETAS) with Assignment Center.
>
> Between February 5, 2024 and March 29, 2024, the USPTO, unintentionally,
> through a computer programming error, permitted bibliographic information
> to be viewed by unauthorized individuals with access to registered
> Assignment Center accounts. This bibliographic information was limited to
> the application number (the two-digit series code plus the six-digit serial
> number) and title of the invention.
>
> You are receiving this notification because your application ?spatent
> title may have been viewed during that time frame by individual(s) who
> lacked permission to do so . The software error was first reproduced by
> USPTO on March 28, 2024, and was corrected on March 29, 2024. Only
> application numbers and titles were disclosed; it is important to note that
> your specification and claims were not part of the information made
> available and were not accessed.
>
> Any improper access of the application information between the dates of
> February 5, 2024 and March 29, 2024, is not considered a publication of
> such applications under 35 U.S.C. 122(b). No rights in United States
> patents are threatened by the access to unpublished applications. It is
> extremely unlikely that the title could disclose the invention in a way
> that would constitute patent- defeating prior art in any jurisdiction. To
> the extent any issue is raised, the USPTO will assist applicants by
> confirming that the disclosure was erroneous and inadvertent.
>
> We?re committed to data security and are taking enhanced steps to prevent
> incidents such as this from happening in the future. The USPTO sincerely
> regrets this error and is instituting more testing controls, both manual
> and automated testing, to prevent similar processing errors in the future.
>
> Inquiries regarding this matter may be directed to Mark Polutta, Senior
> Legal Advisor, at (571) 272-7709 or Andrew Stclair, Legal Advisor, at (571)
> 270-0238, both of the Office of Patent Legal Administration or via email
> addressed to ugPto.gov.
>
> Henry ?Jamie? Holcombe
> Chief Information Officer
> US Patent and Trademark Office
> Office +1 (571)272-9400
>
> Dated: April 27 th , 2024
>
> --
> Patentpractice mailing list
> Patentpractice at oppedahl-lists.com
>
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>
--
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*David Boundy *| Partner | Potomac Law Group, PLLC
P.O. Box 590638, Newton, MA 02459
Tel (646) 472-9737 | Fax: (202) 318-7707
*dboundy at potomaclaw.com <dboundy at potomaclaw.com>* | *www.potomaclaw.com
<http://www.potomaclaw.com>*
Articles at http://ssrn.com/author=2936470 <http://ssrn.com/author=2936470>
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Message: 18
Date: Wed, 1 May 2024 09:10:06 -0400
From: David Boundy <DavidBoundyEsq at gmail.com>
To: "For patent practitioners. This is not for laypersons to seek
legal advice." <patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] Interesting notice from USPTO re data
breach
Message-ID:
<CAJwugqHsEVFXsQR-CKNkco82jotEnK+t7Y2e2FsMScmdJBWypg at mail.gmail.com>
Content-Type: text/plain; charset="utf-8"
*Question 1.* The data breach re "where you sleep at night" was just
under a year ago. Are there others? Can we come up with ohters so we
can write a letter to Vidal and the Inspector General complaining of a
*pattern* instead of a single instance?
*Question 2.* Here's a draft letter -- any refinements?
Dear [client]:
The attached letter from the U.S. Patent Office explains a data breach into
the Patent Office's computer systems. Our conclusion is that the risk is
minimal, and nothing can be done.
Because of a bug in the PTO's software, the serial numbers and titles of
patent applications that should have been maintained confidential may have
been exposed to unauthorized third parties. This is not the typical kind
of data breach involving an external attacker; this is a programming bug in
which the Patent Office mis-set the switches to protect data that should
have been protected. As the Patent Office describes it, the breach is
likely small ? it would only have occurred when a third party made
a database query that would have included your patent application, and the
data exposed would only have been the serial number and title of the patent
application, not the remainder of the content. The Patent Office's access
logging does not record who looked at what when, so there is no way to know
whether any of your applications are among those exposed, and if so, to
whom.
The Patent Office's letter explains that the breach was open from February
5 to March 29. The letter explains that the Patent Office's testing did
not detect or confirm the error until March 28, and the breach was closed
March 29. The letter explains that the Patent Office is "committed to data
security" but this is the second such data breach in the last year.
The only likely situation in which we could see genuine harm is where the
title reveals the invention, for example, where the title names a specific
compound and its treatment indication. If you believe there could be harm
in revealing the title of any of your specific patent applications, the PTO
offers that "the USPTO will assist applicants by confirming that the the
disclosure was erroneous and inadvertent."
On Sun, Apr 28, 2024 at 5:40?AM Dan Feigelson via Patentpractice <
> patentpractice at oppedahl-lists.com> wrote:
>
>> I got the following in one of my cases. Supposedly posted yesterday
>> (Saturday, April 27)
>>
>> *Notice of Potential Erroneous Release of Patent Application Titles*
>>
>> On February 5, 2024, the United States Patent and Trademark Office
>> (USPTO), replaced the Electronic Patent Assignment System (EPAS) and
>> Electronic Trademark Assignment System (ETAS) with Assignment Center.
>>
>> Between February 5, 2024 and March 29, 2024, the USPTO, unintentionally,
>> through a computer programming error, permitted bibliographic information
>> to be viewed by unauthorized individuals with access to registered
>> Assignment Center accounts. This bibliographic information was limited to
>> the application number (the two-digit series code plus the six-digit serial
>> number) and title of the invention.
>>
>> You are receiving this notification because your application ?spatent
>> title may have been viewed during that time frame by individual(s) who
>> lacked permission to do so . The software error was first reproduced by
>> USPTO on March 28, 2024, and was corrected on March 29, 2024. Only
>> application numbers and titles were disclosed; it is important to note that
>> your specification and claims were not part of the information made
>> available and were not accessed.
>>
>> Any improper access of the application information between the dates of
>> February 5, 2024 and March 29, 2024, is not considered a publication of
>> such applications under 35 U.S.C. 122(b). No rights in United States
>> patents are threatened by the access to unpublished applications. It is
>> extremely unlikely that the title could disclose the invention in a way
>> that would constitute patent- defeating prior art in any jurisdiction. To
>> the extent any issue is raised, the USPTO will assist applicants by
>> confirming that the disclosure was erroneous and inadvertent.
>>
>> We?re committed to data security and are taking enhanced steps to prevent
>> incidents such as this from happening in the future. The USPTO sincerely
>> regrets this error and is instituting more testing controls, both manual
>> and automated testing, to prevent similar processing errors in the future.
>>
>> Inquiries regarding this matter may be directed to Mark Polutta, Senior
>> Legal Advisor, at (571) 272-7709 or Andrew Stclair, Legal Advisor, at (571)
>> 270-0238, both of the Office of Patent Legal Administration or via email
>> addressed to ugPto.gov.
>>
>> Henry ?Jamie? Holcombe
>> Chief Information Officer
>> US Patent and Trademark Office
>> Office +1 (571)272-9400
>>
>> Dated: April 27 th , 2024
>>
>> --
>> Patentpractice mailing list
>> Patentpractice at oppedahl-lists.com
>>
>> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>>
>
>
> --
>
>
> <https://www.iam-media.com/strategy300/individuals/david-boundy>
>
> *David Boundy *| Partner | Potomac Law Group, PLLC
>
> P.O. Box 590638, Newton, MA 02459
>
> Tel (646) 472-9737 | Fax: (202) 318-7707
>
> *dboundy at potomaclaw.com <dboundy at potomaclaw.com>* | *www.potomaclaw.com
> <http://www.potomaclaw.com>*
>
> Articles at http://ssrn.com/author=2936470
> <http://ssrn.com/author=2936470>
> <https://www.keynect.us/requestCardAccess/USA500DBOUN?>
>
> Click here to add me to your contacts.
> <https://www.keynect.us/requestCardAccess/USA500DBOUN?>
>
>
--
<https://www.iam-media.com/strategy300/individuals/david-boundy>
*David Boundy *| Partner | Potomac Law Group, PLLC
P.O. Box 590638, Newton, MA 02459
Tel (646) 472-9737 | Fax: (202) 318-7707
*dboundy at potomaclaw.com <dboundy at potomaclaw.com>* | *www.potomaclaw.com
<http://www.potomaclaw.com>*
Articles at http://ssrn.com/author=2936470 <http://ssrn.com/author=2936470>
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Message: 19
Date: Wed, 1 May 2024 09:26:23 -0400
From: Jeffrey Semprebon <jesemprebon at gmail.com>
To: "For patent practitioners. This is not for laypersons to seek
legal advice." <patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] Office Action Predictions
Message-ID:
<CAO06ByfmmdeP2vQ6oAravTmF6=P7WAi25ZS9kT39sJ2Naz+bHw at mail.gmail.com>
Content-Type: text/plain; charset="utf-8"
Back when we had PAIR, I noted that the predicted FOAM would stick at X
number of months in the future, where X is an integer from 3 to 5, and
would very often remain so for Y months where Y is an integer greater than
X. Of course, at some point the office action would arrive unannounced,
while the prediction immediately preceding blithely remained at X months.
-Jeff
Jeffrey E. Semprebon
Semprebon Patent Services
www.semprebonps.com<http://www.semprebonps.com>
72 Myrtle Street
Claremont, New Hampshire 03743
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Message: 20
Date: Wed, 1 May 2024 13:50:17 +0000
From: Timothy Snowden <Timothy at thompsonpatentlaw.com>
To: "For patent practitioners. This is not for laypersons to seek
legal advice." <patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] Number of AFCP interviews granted each
year
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I've had a number of examiners decide they can't get it done under AFCP, but I can only think of a couple of times that they refused/ignored an interview request. That said, I typically request an interview at the same time I file the AFCP request, which apparently triggers something on their docket that makes it harder for them to ignore. I have had Examiners try to get by with calling me up and telling me they were refusing to allow under AFCP, and have that count for the interview ? but you can still usually manage to at least hold get them to stay on the phone long enough to explain what they see as deficient and get a tentative agreement for next steps under RCE.
The main reason I use AFCP2 in almost all cases is to keep them from cheating on the RCE ? if they've refused the AFCP because they don't have time to examine, they basically can't go final on RCE.
________________________________
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Katherine Koenig via Patentpractice <patentpractice at oppedahl-lists.com>
Sent: Tuesday, April 30, 2024 3:28 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Katherine Koenig <katherine at koenigipworks.com>
Subject: Re: [Patentpractice] Number of AFCP interviews granted each year
That?s been my experience in the majority of cases as well ? if the AAF and AFCP doesn?t result in allowance, there?s no interview granted. I seem to remember that interviews were almost always granted, and it was very helpful to hear the Examiner?s position before filing an RCE.
Best regards,
Katherine
Dr. Katherine Koenig
Registered Patent Attorney
Koenig IP Works, PLLC
2208 Mariner Dr.
Fort Lauderdale, FL 33316
(954) 903-1699
katherine at koenigipworks.com<mailto:katherine at koenigipworks.com>
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Targeted Intellectual Property Strategy
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Scott Nielson via Patentpractice
Sent: Tuesday, April 30, 2024 4:25 PM
To: 'For patent practitioners. This is not for laypersons to seek legal advice.' <patentpractice at oppedahl-lists.com>
Cc: Scott Nielson <scnielson at outlook.com>
Subject: Re: [Patentpractice] Number of AFCP interviews granted each year
I'm starting to think AFCP requests are a scam. I always file them when taking claims deemed allowable in an office action even though it's not required. I do it because I want to do the examiner a favor (an AFCP request gives the examiner half a count or something like that).
However, if an AFCP does not result in an allowance, then the examiner rarely conducts an interview anymore. The examiner just treats it like an after final request and waits for me to file an RCE to get even more counts.
I think the USPTO is picking up on how the AFCP program is being abused by examiners to generate counts without any extra effort on the examiner's part, which is why it wants to get rid of the program in the most recent fee setting proposal (I think that's where I saw it).
Scott Nielson
801-660-4400
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of Ed Welch via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Sent: Tuesday, April 30, 2024 1:53 PM
To: 'For patent practitioners. This is not for laypersons to seek legal advice.' <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: welched123 at gmail.com<mailto:welched123 at gmail.com> <welched123 at gmail.com<mailto:welched123 at gmail.com>>
Subject: Re: [Patentpractice] Number of AFCP interviews granted each year
No, that?s not right! The AFCP Request can be proper; but, an interview may still not happen. Based upon my experience and, as I recall, examiner comments, the examiners have the discretion to treat the AFCP Request as an AFCP Request or an After Final Response. In the latter, they merely issue an (another) Advisory Action maintaining the Final Rejection and denying entry of the AFCP amendment. In the past several months I filed 3 AFCP Requests, one case was allowed without an interview. In the other two cases, both were treated as After Final Responses (with no mention of the AFCP Request having been filed) and rejected by way of Advisory Actions. Finally, I filed the RCEs, which is clearly what these examiners wanted, with the amendment from the AFCP Request and both cases were promptly allowed: again, no interview. Hence, the low count of interviews is a result of allowance without an interview and the failure of the examiner to consider the AFCP Request. While all three would have been included in the total counts of AFCP submission, since all were submitted that way despite not being treated as such, none of these had an interview.
Ed Welch
IP&L Solutions
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Jim Larsen via Patentpractice
Sent: Tuesday, April 30, 2024 3:13 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Jim Larsen <jim at larsen-ip.com<mailto:jim at larsen-ip.com>>
Subject: Re: [Patentpractice] Number of AFCP interviews granted each year
By definition, a proper AFCP request includes an examiner-initiated interview, if only to indicate that (at least in the majority of my experience) additional search and consideration will be required (i.e., RCE).
Fed. Reg. Vo. 78, No. 96, at 29118<https://www.govinfo.gov/content/pkg/FR-2013-05-17/pdf/2013-11870.pdf>
?If the examiner?s consideration of a proper AFCP 2.0 request and response does not result in a determination that all pending claims are in condition for allowance, the examiner will request an interview with the applicant to discuss the response.?
If you aren?t seeing interview requests from examiners, it follows that either the application was allowed or the AFCP request was improper. No?
Best regards,
-Jim
James C. Larsen
Attorney
Larsen IP PLLC
p: 425.298.6846
e: jim at Larsen-IP.com<mailto:jim at Larsen-IP.com>
w. www.Larsen-IP.com<http://www.larsen-ip.com/>
NOTICE OF CONFIDENTIALITY: The information contained in this email, including any attachments, is confidential and may be privileged. It is intended only for the use of the individual(s) or entity named herein. If the reader of this message is not the intended recipient or authorized agent, you are hereby notified that any dissemination, distribution, or copying of this communication is strictly prohibited. Unintended recipients are requested to notify the sender immediately and to permanently delete this e-mail, any attachments, and copies.
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of pbrisky--- via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Date: Tuesday, April 30, 2024 at 12:04?PM
To: Carl Oppedahl via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: pbrisky at fujitsu.com<mailto:pbrisky at fujitsu.com> <pbrisky at fujitsu.com<mailto:pbrisky at fujitsu.com>>
Subject: [Patentpractice] Number of AFCP interviews granted each year
Hi
The USPTO claims that 50% of all AFCP requests (out of the 60k annually) made by applicants have been granted interviews. Anecdotally this has not been our observation. I am wondering if anybody has numbers to either refute the USPTO's assertion or back it up.
Pamela Cei Brisky
Senior Patent Paralegal
Fujitsu North America, Inc.| Fujitsu Intellectual Property Center
pbrisky at fujitsu.com<mailto:pbrisky at fujitsu.com> |571-216-2112
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