[Patentpractice] clever way to avoid $4000 USPTO fee for "9-year-old-old benefit claim" -file it as a PCT --> would this work ??? or is it to dangerous ??

[Dan Feigelson]

Ron, your post got me to thinking: I don't see how laches in filing a
continuation or presenting particular claims becomes a matter for the PTO
to deal with during prosecution or even afterward. It's a
judicially created doctrine, having nothing to do with 35 USC 102, 103, 112
or even 101 (and the term "laches" doesn't even appear in 35 USC or 37
CFR). And since it's a matter that goes to an applicant's state of mind and
accompanying facts (viz. why an applicant might have delayed filing those
claims), which are things PTO can't readily probe, and that a court is
better situated to assess, I don't think it's part of the PTO's purview in
examining applications. Unfortunately, I'm not on the CAFC, and the
CAFC has held differently, so my view on this point doesn't matter. :-(

Of course, even if the PTO was overstepping its authority in making laches
rejections, overstepping its authority has never bothered the PTO before.

But the real question in my mind is, is the PTO actually issuing
rejections, on the basis of a continuation allegedly being filed late,
against any inventor/applicant whose name isn't Gilbert Hyatt?  I
personally have not encountered such, and I don't see anything in the MPEP
that explicitly instructs examiners to reject an application
for prosecution laches if that application was filed as a continuation more
than X years after its earliests progenitor application was filed.  The
word "laches" appears in only two MPEP sections, 211.01(b) and 2190.  The
former explicitly says, "There is no limit to the number of prior
applications through which a chain of copendency may be traced to obtain
the benefit of the filing date of the earliest of a chain of prior
copending applications. See *In re Henriksen,* 399 F2.d 253, 158 USPQ 224
(CCPA 1968)." The next sentence does caution, "But see *MPEP § 2190
<https://mpep.uspto.gov/RDMS/MPEP/current#/current/d0e220656.html>*
(prosecution laches)", but 2190 does not establish a default for the PTO
making a laches rejection.  Rather, it states,

"The Federal Circuit affirmed a rejection of claims in a patent application
on the ground that applicant had forfeited his right to a patent under the
doctrine of prosecution history laches for unreasonable and undue delay in
prosecution. *In re Bogese,* 303 F.3d 1362, 1369, 64 USPQ2d 1448, 1453
(Fed. Cir. 2002) (Applicant "filed twelve continuation applications over an
eight-year period and did not substantively advance prosecution when
required and given an opportunity to do so by the PTO."). See also *Hyatt
v. Hirshfeld,* 998 F.3d 1347, 2021 USPQ2d 591 (Fed. Cir. 2021). While there
are no firm guidelines for determining when laches is triggered, it applies
only in egregious cases of unreasonable and unexplained delay in
prosecution. For example, where there are "multiple examples of repetitive
filings that demonstrate a pattern of unjustified delayed prosecution,"
 laches may be triggered. *Symbol Tech. Inc. v. Lemelson Med., Educ., &
Research Found.,* 422 F.3d 1378, 1385, 76 USPQ2d 1354, 1360 (Fed. Cir.
2005)(Court discussed difference between legitimate reasons for refiling
patent applications and refilings for the business purpose of delaying the
issuance of previously allowed claims.). An examiner should obtain approval
from the TC Director before making a rejection on the grounds of
prosecution history laches."

That sounds like a laches rejection is supposed to be exceptional, not
routine.  Again, does the reality in prosecution deviate from what the MPEP
instructs?

I also would find it odd if the PTO were, on the one hand, to significantly
raise fees for continuations filed X amount of time after the earliest
application in the chain (which the PTO did earlier this year), but then
turn around and on the basis of that application being filed after said
amount of time, reject the application for laches in the filing of the
application.  It's not quite as bad as Elijah saying to Ahab, הרצחת וגם
ירשת, but it's a similar idea. If the right circumstances arose, I would
even argue that the imposition of the higher fees, and the acceptance of
such payment, estops the PTO from making such a rejection on a *per se*
basis. If the PTO wants applicants to file more continuations earlier -
something that, again, is out of its purview, because it's not for the PTO
to tell applicants what their IP protections strategy should be - then it
can do so by simply making more laches rejections of continuations, rather
than demanding higher-than-usual fees to file those applications. By opting
for the latter course of action, the PTO has implicitly admitted - so I
would argue - that it isn't authorized to make laches rejections. In fact,
the higher fees are meant ot offset the supposedly additional work for the
PTO to examine continuation applications (something it complained about in
its litigation with Hyatt, when it said the PTO's costs in examining his
applications were greater than the fees Hyatt had paid).

Regarding Hyatt v Hirschfeld
<https://www.cafc.uscourts.gov/opinions-orders/18-2390.opinion.6-1-2021_1784662.pdf>
(the first of the three such titled cases from 2021), that case was decided
on facts that don't apply anymore: it dealt with a pre-GATT case in which
Hyatt's patent would run for 17 years from grant. It addresses four patent
applications each of which had multiple progenitor applications, many of
which had matured into patents, and in which Hyatt had filed hundreds of
claims, making it exceedingly difficult for the PTO to examine those
applications, and which - so the PTO claimed - the cost of examination far
exceeded the fees paid by Hyatt for examination. The decisions also relied
on articles written by academics (including then-professor Kimberly Moore,
in the infamous 2004 paper she co-authored with Mark Lemley) in which they
whined about submarine patents but which were written post-1995, at a time
that submarine patents were vanishing from the scene. I understand that the
writers of the MPEP do not always look at such distinctions (the reference
to Hyatt v Hirschfeld in MPEP 2190 makes no comment on the case), and
indeed sometimes the CAFC itself does not seem to acknowledge such changed
circumstances. But those distinctions *are* relevant, and today one filing
a continuation 10 years after his first application was filed has cut 10
years off his patent life. So unlike the applications at issue Hyatt, today
an applicant takes a risk by delaying the filing of a continuation. And
what the original poster, Bill, proposed was nothing like what Hyatt did.
He's talking about filing a single application, presumably with just a few
claims and only a few members in the continuation chain, and trying to
delay payment of the continuation fee, by filing that application as a
PCT.  I don't see Hyatt v Hirschfeld as being applicable, and I think
Bill's approach is a sound one to achieve his client's goal.

Finally,  Hyatt v Hirschfeld doesn't come right out and say that a 6 year
gap between the earliest application and the filing of the continuation is
presumptively unreasonable. Hyatt v Hirschfeld cites an earlier case, Wanlass
v General Electric
<https://scholar.google.com/scholar_case?case=6469396644842345702&q=Wanlass+v.+Gen.++Elec.+Co.,+148+F.3d+1334,+1337+(Fed.+Cir.+1998)&hl=en&as_sdt=2006>,
which says that a six year delay in *filing suit for patent infringement*
is presumptively unreasonable and prejudicial to potential infringers.
That's why Hyatt v Hirschfeld cites Wanlass not in discussing unreasonable
delay (in whatever context), but in discussing whether such delay is
*prejudicial* to third parties (a question the court needed to consider
since the PTO was a defendant in an action under 35 USC 145), and states
"In the context of laches, we have held that a delay of more than six years
raises a 'presumption that it is unreasonable, inexcusable, and
prejudicial.'    That presumption shifts the burden to the patentee to
prove that  'either the patentee’s delay was reasonable or excusable under
the circumstances or the defendant suffered neither economic nor
evidentiary prejudice.' " Now, I wouldn't put it beyond the PTO to take
that statement about Wanlass from Hyatt and to use it to assert that a six
gap in filing a continuation is presumptively unreasonable - the authors of
the MPEP have misrepresented cases before, always to the PTO's benefit -
but thus far, the PTO has not done so, as noted above regarding laches (and
in fact Wanlass is not cited anywhere in the MPEP, and 2190 is the only
place in which Hyatt v Hirshfeld is cited).

Dan


On Mon, Oct 6, 2025 at 1:33 AM Ron D. Katznelson via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> Bill,
> Under your fact pattern of original priority date longer than six years
> ago, and regardless of the filing route you choose, your filing of
> continuation now will be *presumed* prosecution conduct with
> "unreasonable and unexplained delay" and therefore subject to PTO laches
> rejection even on the first action.
> This six-year presumption of prosecution laches was recently introduced by
> the Federal Circuit, which stated: “we have held that a delay of more than
> six years raises a ‘presumption that it is unreasonable, inexcusable, and
> prejudicial.’” *Hyatt v. Hirshfeld*, 998 F.3d 1347, 1369 (Fed. Cir.
> 2021). The Court even extended the presumption to the existence of
> intervening rights, explaining that "an unreasonable and unexplained
> prosecution delay of six years or more raises a presumption of prejudice,
> including intervening rights." *Id.* at 1370.
>
> My study shows that 8.6% of all utility patents issued in the last two
> months have priority longer than 6 years -- priority date earlier than
> August 1, 2019. Kate Gaudry’s studies show that under this Federal Circuit
> presumption, more than one-third of patents on the top pharmaceuticals, and
> 18% of all patents issued from continuing applications, are now *presumed
> unenforceable. **See* her articles on the impacts of such decision in
> *IPWatchdog* on February 6, 2023
> <https://ipwatchdog.com/2023/02/06/hyatt-v-hirshfeld-mean-one-third-patents-top-pharmaceuticals-presumed-invalid/id=156151/>,
> and on July 18, 2021
> <https://ipwatchdog.com/2021/07/18/5-u-s-issued-patents-presumed-unenforceable-laches-due-priority-claims/id=135609/>
> .
>
> I am working on an *amicus* brief on behalf of IEEE-USA in support of
> rehearing *en banc* to vacate this decision.  Any of you interested in
> the legal and equitable issues involved, or know of organizations that
> would be willing to sign on an *amicus* brief, are welcome to contact me
> by the email below.
>
> Thanks,
>
> Ron
>
> *-------------------------------------------------------*
>
> Ron D. Katznelson, Ph.D.
>
> 2020 Chairman, IEEE-USA IP Committee
> <https://ieeeusa.org/volunteers/committees/ipc/>
>
> Email: rkatznelson at roadrunner.com <http://roadrunner.com/>
>
>
>
> Get Outlook for iOS <https://aka.ms/o0ukef>
> ------------------------------
> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> on
> behalf of William Ahmed via Patentpractice <
> patentpractice at oppedahl-lists.com>
> *Sent:* Sunday, October 5, 2025 11:48:18 AM
> *To:* For patent practitioners. This is not for laypersons to seek legal
> advice. <patentpractice at oppedahl-lists.com>; Randall Svihla <
> rsvihla at nsiplaw.com>
> *Cc:* William Ahmed <ahmed.william at ymail.com>
> *Subject:* Re: [Patentpractice] clever way to avoid $4000 USPTO fee for
> "9-year-old-old benefit claim" -file it as a PCT --> would this work ??? or
> is it to dangerous ??
>
> Yes but that is 30 months from now.  $3,000 to postpone a $6,000 fee [plus
> prosecution costs - they already have all the grants they wants] seems
> cheap IF this works.
>
> Could someone complain about prosecution latches because of this
> strategy?  I suppose I could reduce the chance of that by filing the PCT
> with an early publication request, so that noone can complain about a
> 'submarine patent'
>
> THOUGHTS? Would this work???
>
> On Sunday, October 5, 2025 at 09:44:48 PM GMT+3, Randall Svihla <
> rsvihla at nsiplaw.com> wrote:
>
>
> Setting aside everything else, you are still going to have to pay that
> $4,000 fee when you enter the national state with that ADS adding the
> benefit claims.
>
>
>
>
>
> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On
> Behalf Of *William Ahmed via Patentpractice
> *Sent:* Sunday, October 5, 2025 2:31 PM
> *To:* For Patent Practitioners. This Is Not for Laypersons To Seek Legal
> Advice. <patentpractice at oppedahl-lists.com>
> *Cc:* William Ahmed <ahmed.william at ymail.com>
> *Subject:* [Patentpractice] clever way to avoid $4000 USPTO fee for
> "9-year-old-old benefit claim" -file it as a PCT --> would this work ??? or
> is it to dangerous ??
>
>
>
> Dear All,
>
>
>
> CURRENT SITUATION
>
>
>
> I have an allowed US non-provisional patent application where the oldest
> benefit claim is from May 2016.
>
> The client wants to file a continuation to 'keep something alive' - there
> is no other reason for now to submit the CON.
>
> The client also believes that investors would prefer a portfolio where the
> US grants have a CON alive.
>
>
>
> THE PROBLEM
>
>
>
> Since the client is a large entity, the filing fees would be approximately
> $6,000 since we would be stuck paying
>
> $4,000 for "Filing an application or presentation of benefit claim more
> than nine years after earliest benefit date"
>
>
>
> $6,000 is a lot of money.
>
>
>
> PROPOSED SOLUTION -- file the CON as a PCT
>
>
>
> On the other hand, if we file this continuation in the PCT, the fees now
> would only be around $3,000, especially if we request a search
>
> in Philippines [ (IPOPHL)]  or in KIPO.
>
>
>
> The search report would be 'negative' but "who cares."
>
>
>
> This PCT would have no Paris convention claim, so it would have a lifespan
> of 30 months - keeping it alive for 2.5 years for only $3,000 in fees is
> great.
>
>
>
> POTENTIAL PROBLEM -->
>
> When the PCT enters into the US national phase, I would submit an ADS with
> many many many benefit claims [the allowed application is a CON of a CON of
> a CON of a 371 of a PCT]. This ADS adding MULTIPLE benefit claims [of
> multiple generations] would need to be submitted within 4 months of
> national phase entry.
>
>
>
>
>
> MY QUESTION --> this seems too good to be true. Could something go wrong?
>
>
>
> Many thanks,
>
> Bill
> --
> Patentpractice mailing list
> Patentpractice at oppedahl-lists.com
>
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>

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