0

The most recent step of the examination process in question was to submit another response to the examiner, which at this point required an RCE and the associated fee. On the RCE form, under Miscellaneous, is the following option which I selected and completed as follows:
enter image description here

The reason for wanting to delay examination is that the patent family, including this open application, is now in a marketing effort by a broker. I wanted to keep this one open as long as possible, theoretically to enhance value for a potential buyer who may want to modify it further. However I did write my response such that I believed it had a good chance to overcome previous objections and rejections.

However, to my surprise I just received NOA on this, and received it very quickly – as in, about one month after submission. The USPTO had totally ignored the request to “suspend action,” and proceeeded full-speed-ahead. In normal circumstances, of course such a quick NOA would be very good news. But in light of the marketing strategy, it means I'll need to open another application at my expense, in order to have a package that includes this option. (I do have a few months to do that, since the issue fee hasn't been paid yet.)

Of course it would make no sense to ask them to withdraw the NOA. But is there anything that would make sense to (attempt) to pressure them to do, in light of the oversight error at their end?

[more experienced users here, please modify tags as appropriate]

1
  • I see in the CFR relevant to suspension that you must include - "(1) A showing of good and sufficient cause for suspension of action ". Did you file something besides checking the box? Also I see "the Office may grant a suspension of action by the Office under this paragraph". Note the word "may". bitlaw.com/source/37cfr/1_103.html
    – George White
    Jul 13 '20 at 4:21
1

No

The relevant CRF says -

37 CFR 1.103  Suspension of action by the Office.

(a) Suspension for cause. On request of the applicant, the Office may grant a suspension of action by the Office under this paragraph for good and sufficient cause. The Office will not suspend action if a reply by applicant to an Office action is outstanding. Any petition for suspension of action under this paragraph must specify a period of suspension not exceeding six months. Any petition for suspension of action under this paragraph must also include:

(1) A showing of good and sufficient cause for suspension of action; and

(2) The fee set forth in § 1.17(g), unless such cause is the fault of the Office.

The "may" seems to kill any idea that they must suspend and you haven't said if you complied with (1) providing good cause and (2) paying the fee.

Regarding a purchaser having freedom to improve the resulting patent, they would have the option for a broadening reexamination for two years, but I agree that a continuation on file would be better.

4
  • It would've been nice if someone would at least acknowledge seeing that option selected on the RCE form, then provide a response for why it isn't being followed. Too much to expect, I assume. It is true that I hadn't paid the fee, but that was because I could never find the appropriate fee type in the Fees section of EFS Web. I promptly called twice about that, but no one in the “Inventor's Assistance Center” could tell me the answer. I was advised to just wait and see if I get a notice about an amount due; then pay accordingly. I never received such a notice.
    – Charles
    Jul 14 '20 at 18:50
  • 1
    The USPTO is not a very forgiving bureaucracy. You didn't mention if you submitted something to "provide good cause". When I applied to take the patent bar exam, I got the form back. It said "thank you for filling out line 1a with your name, but you didn't fill out line 1b that requests your name as it appears on a government issued ID - please start over." Your problem is relatively small - an example, an un-signed response to an office action is silently treated as if no submission was made at all and after 6 months your application quietly goes abandoned.
    – George White
    Jul 14 '20 at 19:54
  • True, it isn't a big problem in context of what I am trying to do, as I expected having to open another CON anyway. I suppose this failure to get the delay can be ignored in light of having achieved NOA on an application I had previously struggled to get allowance on.
    – Charles
    Jul 15 '20 at 20:01
  • And regardless of the size of your problem, they had no obligation to suspend. Separately, congratulations on the NOA. It is not easy for a pro se inventor to get.
    – George White
    Jul 15 '20 at 22:27

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.