"So I just re-opened"

Ensuring government bureaucracies treat citizens fairly is no minor concern. It's a major reason why we have a constitution. We also have overarching federals laws (the Administrative Procedure Act) that have been around for more than half a century designed with the principal goal of holding agencies accountable and providing a check on their expansive power. Why do we have such important protections? Because human experience has confirmed, time and again, that government bureaucracies wield immense power and can be cold-hearted institutions utterly incapable of providing consistently fair treatment to the citizens it purports to serve.

One bureaucratic practice that hits close to home for patent attorneys is the abusive process where the USPTO re-opens prosecution responsive to an appeal brief. Consider a small inventor, working to commercialize her invention in a competitive world while keeping copy-cats at bay. The deck is already stacked against the inventor, but she perseveres and actually hires counsel before publically disclosing her invention. She follows the right steps in filing a patent application that describes her invention, along with paying all the necessary fees along the way. She then receives repeated rejections which her attorney explains to her are improper. Despite interviews with the examiner and supervisor, the rejections are maintained. Her only option is to give up, keep paying more fees with no prospect of allowance even with further amendments, or appeal. After some soul searching and leveraging whatever financial resources she can muster, she proceeds to have her attorney prepare an appeal brief. And let's assume it is a strong brief that should win on appeal. This process of multiple rejections and eventual appeal takes many months. But finally, her attorney finalizes and files the strong, convincing brief.

So does she get to have her appeal heard by the Board? No, the examiner decides to re-open prosecution and start the process all over again with a new non-final rejection. The inventor has no recourse but to continue to again argue, amend, appeal, or abandon, all the while incurring more delay and costs.

Sound unfair? It is. Even with all of the protections in administrative law, the USPTO is still free to take such actions and there is little that can be done by the applicant to curtail it. This is an especially troubling practice because it means that the Office is admitting it made improper rejections, refused to withdraw them by making them final despite arguments pointing out why they were wrong, and then only after forcing the inventor to again explain the problems in an appeal brief, agreed to withdraw them only to substitute new reasons for rejection. But at least we can find solace knowing that the USPTO follows its guidelines in using an appeal conference as outlined in MPEP 1207.01, right?

An appeal conference is mandatory in all cases in which an acceptable brief (MPEP § 1205) has been filed. However, if the examiner charged with the responsibility of preparing the examiner’s answer reaches a conclusion that the appeal should not go forward and the supervisory patent examiner (SPE) approves, then no appeal conference is necessary. In this case, the examiner may reopen prosecution and issue another Office action or may prepare a notice of allowability if appropriate. See MPEP § 1207.04. In circumstances where a notice of allowability is prepared, it may be appropriate to include reasons for allowance. See MPEP § 1302.14.

While the examiner might have been wrong to stubbornly improperly reject the application, at least the examiner has to follow procedures aimed at keeping things impartial. Or so you would think.

I've handled many cases similar to the facts above, and recently filed a Freedom of Information Act (FOIA) request to find out whether and how the USPTO follows its own procedures aimed at keeping the government bureaucracy in check. What I found was shocking, and likely indicative of supervisors either apathetic toward applicants, or outright hostile toward them.

As an example, in a particular application in which prosecution has been re-opened twice (that's right, twice in a row responsive to two appeal briefs on the same claims) I requested, among other things, the following information:

Portion of FOIA request, redacted to remove serial number and dates of Office actions

Portion of FOIA request, redacted to remove serial number and dates of Office actions

As noted above, the results were shocking, even to me. The USPTO provided me with copies of internal emails among the examiner and supervisors and primary examiner. While the primary examiner was trying to do the right thing, the same cannot be said for the other participants. It turns out that after the first appeal brief, no conference was held for reasons which we cannot see (as they were redacted as part of the deliberative process exception). What's more, not only was no conference held, but the new rejection that was issued responsive to the first appeal brief was NOT approved by a supervisory examiner. In fact, it looks as though the USPTO's own internal emails confirm that the examiner not only re-opened prosecution without the conference and without any approval from a SPE, but also possibly without even obtaining proper approval from the primary examiner (whose name was signed on the action!). How do we know this? Because the emails obtained show that the primary examiner (who's name was signed on the action) followed up with the examiner, asking about the status of the case, after the examiner had already put the action into the system (as confirmed via the transaction history). And we know no SPE approved the re-opening because the action itself has no signature from a SPE. 

If the USPTO cannot even follow basic procedures in a case as questionable as this, they literally must believe that they can do anything. Consider how the inventor described above feels. She has laid it out on the line only to have to start all over, and in the above case do it twice! On the other end, the USPTO is taking arbitrary and capricious action as if they are entitled to do anything without consequences.

One of the most telling parts of the e-mails was a single portion in which the true callousness of government bureaucracies jumps off the page. In responding to the primary examiner (who was legitimately checking in on the status of the conference (because he fully expected that there should have been one, as that is the procedure after all)), he receives an emailed response from the examiner as follows:

Excerpt of FOIA production, redacted by the USPTO initially, and further redacted in grey by Mr. IP Law.

Excerpt of FOIA production, redacted by the USPTO initially, and further redacted in grey by Mr. IP Law.

Let that sink in... "No, I didn't hold the conference.... So I just re-opened." Like it is nothing. Like the inventor who has spent thousands of dollars and years working to protect their invention, matters not. And remember, at this point in the email chain, the examiner had already submitted the re-opening action without approval of a SPE and without even the approval of the primary on the case (the one asking the questions!). These are clear violations of the agencies own procedures - violations that only come to light by the filing of a FOIA request. And we all know how many people file FOIA requests regarding patent prosecution - let's just say it is anything but routine.

While this example just scratches the surface, it illustrates why we need strong protections that inherently put checks on government agencies, particularly the USPTO, as well as why applicants need to take action to enforce them, and hold agencies to following their own procedures. As a youngster in 1986, I remember watching President Reagan's speech that starts out by explaining how everyone knows that he has "always felt the nine most terrifying words in the English language are: I'm from the Government, and I'm here to help." Those words ring in my ears when I see behind the curtain and shine sunlight, the best disinfectant, on certain areas of the USPTO. 

On the positive side, in my experience, it is a minority of examiners and supervisors at the USPTO that exhibit behaviors as outlined above. Even here you can see that the primary examiner was actually trying to do the right thing. So this example also illustrates why there are many examiners and supervisors that I greatly respect that have a sense of justice and who do care about inventors.

Sometimes, even examiners with the best of intentions have to re-open prosecution or present new rejections late in prosecution. But when it is done without respecting rules and with disregard for the seriousness of the situation, the integrity of the entire institution is called into question.