NTP Trying To Drag Out The Patent Rejection Process? Wonder Why...

from the hmm dept

Last week the US Patent Office took the surprising step of reaching out and calling both RIM and NTP to let them know that it's very, very likely to reject all of NTP's patents at the heart of the excruciatingly long patent battle with RIM. This was extremely important because the judge in the patent lawsuit had said that he wouldn't wait for the Patent Office's ruling, mainly because he was sick of dealing with the case (who knew that impatience was a reasonable reason for ignoring important evidence and pushing a billion dollar fine?). So, now, the two parallel timelines become much more important. The companies are supposed to file documents with the court by February 1, 2006 -- and the judge is expected to rule soon afterwards. As for the patent review process, NTP was supposed to get its response in by the end of this month, but has managed to squeeze out a 30-day extension meaning it won't have to file the response until the nearly the same date as when the judge will make his decision. While NTP denies it's dragging out the process, it's clearly in the company's interest to do so. Still, we wonder how the judge can, in good conscience, still move forward with the case when the Patent Office has clearly stated that it believes it made a huge mistake in originally granting these patents. Meanwhile, it still seems like a reasonable question as to whether RIM can sue the Patent Office for its admitted negligence in issuing these patents (though, of course, they might want to wait until the patents are really rejected).

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  1. identicon
    patentman, 30 Dec 2005 @ 4:33am


    Couple comments about this relatively ignorant post:
    1) The type of inquiry the Patent Office is giving to the patents at issue is of critical importance here, but you did not report it. If the patents at issue are merely being subjected to re-examination, the patentee retains their patent rights and the outcome of the re-exam process bears only as evidence for or against the validity of the patents in question. If the patents at issue are being subjected to re-issue, however, the patentee sacrifices their patent rights, which, of course, means that during the reissue process their is no cause of action. Thus, judges often find it in their interest to wait for the PTO's determination in either of these processes, because they bear directly on a critical question in all patent litigation, namely whether the patents in question are valid. Generally this has nothing to do with judicial impatience. Rather, it has more to do with the fact that the Federal Circuit feels that the PTO is a better judge of patent validity in many instances because Examiners have the time, resources, and expertise in conducting validity inquiries. Indeed, this is what examiners do for a living.
    2) As for NTP delaying the process. It doesn't really matter whether this delay intentional or not. If the time period for response may be extended (which in most cases it can), the patent applicant is fully within their rights to take advantage of that extension. There is no "squeezing out" of a 30 day extension. In almost every case the patent applicant is given a shortened staturoty period of 3 months to respond to an office action, and can extend that time up to three months simply by paying a fee and filing a 1 page petition. Your article makes it sound as though this is difficult. I work in a patent law firm, and it takes me about 5 minutes to fill out one of these petitions and hand it to my secretary for filing.
    3) Re: the judge continuing to allow the case to go on when the PTO "has clearly stated that it believes it made a huge mistake in originally granting these patents." Have you read the Office Actions that the PTO is issuing during the re-exam/re-issue process in this case? If not, then you have no idea whether all of the claims of the patents in question are being rejected by the PTO or just some of them. The claims of a patent do not stand and fall together. Just because one claim may be invalid does not mean other claims in the patent are invalid as well. Thus, the simple fact the PTO is issuing rejections in this instance is not necessarily indicative that the PTO "made a huge mistake in originally grainting these patents."
    4) Regarding you comment about suing the PTO for negligence, that is rubbish. I used to work as an Examiner at the PTO, so I can say first hand that Examiners are given too little time to do their job with 100% accuracy. As an Examiner you do not have time to locate every single piece of prior art on the planet. That would a) cost a fortune, b) take an enormous amount of time and c) render the U.S. Patent system virtually worthless. Suits for negligence usually come down to an inquiry into whether the Defendant used the care that an ordinary person would have exercised (this is a tort standard). Given the enormous challenge the PTO faces resulting from the shear volume of application it is asked to Examine, I highly doubt that any judge would convict the PTO of failing to use reaosnable care in granting a patent. Indeed, agency law indicates that the courts will give substantial deference to the PTO's rules and procedures for patent issuance. Besides, suiing the PTO for negligence would accomplish nothing except to rattle one of the major foundations of the the U.S. Economy.

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