Word Count

I would have written a shorter letter, but I did not have the time.

Do you know how many times I've done that? It's why my disclosure is easily 3x the length of the patent at issue here. Heck, my third-party submission was longer than their application. That's probably why all the specific prior art citations it contained fell by the wayside. The prior art likely overwhelmed the examiner, and I suspect the quickest way out was to just allow it (read the NOA or Dispatch No. 9 and judge for yourself).

Writing is hard. Knowing what the reader will pay attention to is even harder. That's why I split this site into posts on specific topics.

But the PGR petition is the hard one — I've spent a lot of time getting it short enough.

The PGR has a word cap

A post-grant review petition is capped at 18,700 words (37 C.F.R. § 42.24(a)(1)(ii)), and the count excludes the usual boilerplate — table of contents, table of authorities, mandatory notices, certificate of service and word count, claim listing, and appendix of exhibits. Everything that actually argues the case has to fit inside that number.

It's good because it forces you to pick your best grounds and cut the weak ones. A discipline I don't naturally have.

But what happens if you have a patent that is so riddled with issues that 18,700 doesn't cut it? Well, you're just out of luck.

The fee to file one is $59,375. If you do the math, that's over $3 per word ($59,375 / 18,700 = $3.17).

Longer than their disclosure

I checked: their disclosure was just under 8,000 words (disclosure + claims). And remember how a good chunk of it matches my 2019 published application nearly verbatim. You can verify this yourself: their supposed "novel" disclosure boils down to about two sentences of conclusory stuff. Needing 18,700 words to undo a disclosure that thin is absurd — and I'm still bumping the ceiling. A more thorough examination would have prevented all of this.

The real argument is "Read the Notice of Allowance, and read Claim 13". The reason I need the full 18,700 words is that there are so many independent grounds to plead. Compelling grounds. And the examination failures themselves aren't PGR arguments at all — that's why I needed a whole blog to document those.

Down to the wire

Only 9 months to draft and file this. That is a short fuse. You have to be paying attention. I was paying attention.

I have drafted the full petition (I'll post it here eventually), and as I go through editing it, I keep bouncing off the word cap. Every paragraph I add somewhere has to come out of somewhere else. And it isn't only the weak grounds that go — good ones end up on the cutting-room floor too. 9 months is enough time to object; it isn't enough time to build a filing this heavy. I wish there were a way to flag a patent and get more time to prepare a filing... but that's not the world we live in.

Do I even need a PGR?

Yes — but not because it's the only place to argue § 103. It isn't. It's because it's the only proceeding at the USPTO where I can raise § 112, and the only one where I don't have to hand the whole thing back to the same examining corps that failed me in the first place.

This is an easy § 103. That's what this application should have been rejected on. I still think it's a § 102 because I think it's pretty clear my 2019 published application already discloses everything they claim, but § 103 removes all possible doubt. I could raise those in an ex parte reexamination, for far less money. My concern is I can't participate... I'd have to watch as the examiner hunts for reasons to allow rather than reasons to reject.

But it's § 112 that is the real travesty

This patent claimed a result without disclosing the path to that result. And after the PGR window closes, the USPTO can never revisit it — ex parte reexam and IPR can't reach § 112. This is my chance to ask the USPTO to fix its § 112 examination failure. Even before anyone reaches the merits of the § 112 defects, what isn't arguable is that the examination never addressed them. Look at the totality of the examination: § 112 was never raised at all.

It shouldn't cost $60,000 plus all of this drafting work to point that out.

The Expert Declaration

The expert declaration is for the technical stuff. The petition is for the legal arguments. I'm saying there are so many legal arguments that fitting them into the 18,700-word cap is a significant challenge. The expert can carry a lot of the technical discussion, but not the legal arguments.

Most of my issues with this patent are visible without an "expert". I shouldn't even need an expert to explain that walking takes lifting your foot, moving it forward and setting it down, but that's what this reduces to.

Competent examination

That's what I'm after. An examiner who reads and understands the technology. That's not a big ask. But there are no safeguards to protect against poor examination.

Presumably the ex parte reexaminers are more competent, but what if they are not?

The PTAB reviews the patent, not the examination. And from what I can tell, plenty of petitions never reach the technical merits at all — they get turned away on discretionary or procedural grounds first. Well, this examination is chock-full of errors. And even though those errors aren't grounds for a PGR, they need to be pointed out somewhere.

How I'd fix it

Like I said, 9 months is enough time to object — it's the drafting that isn't doable. The work of drafting a full petition — and the fees — is my problem. Not everyone can take that on. The public should have a way to log a formal objection to a patent without going through any of that. I don't know how many patents issue on a flawed or haphazard examination, but once the PGR window closes there is no way for the public to point out a § 112 failure.

Remember, § 112 is the patent bargain, and I think this patent thumbed its nose at the public by not actually disclosing anything. That is my fundamental issue.

If I could, I'd provide a way for the public to add a formal objection to the record. It could carry a word cap without being as legally burdensome as a PGR. I'd make it a marker on the record — this patent has the following validity concerns: "Concern #1... Concern #2..." etc.

Ideally it would keep the § 112 door open for future action (assuming the public raised that as a concern). Basically, poorly examined and poorly disclosed patents are a blight on the system and there is no practical, affordable way to mitigate that. I'd implement something like the review process that the Third-Party Submission goes through. A screening step to filter out inappropriate submissions. Maybe a way for the applicant to publicly respond.

Not really Considered

The biggest flaw I see is the whole concept of "Considered" as both a verb and a blocker to future objections. If you read the record and prior art for this specific patent, you'll see no sign the examiner "considered" the prior art in the common meaning of that term. In the patent world, though, it reduces to copying a document number. So it means whatever you want it to mean, as long as it points toward the examiner having done their job. That bites in the PGR and any future action because it's my burden to prove it wasn't really considered.

Technically, that's easy — point out the passages and the figures. Formally, it isn't that simple. I'd like to see a way for the public to say "You missed the following relevant prior art citations" and to do it in a way that doesn't backfire like the Third-Party Preissuance Submission does.

Related dispatches

• Dispatch No. 2 — Why a PGR? — the ~$60,000 price tag on the tool I'm now squeezing into a word cap.
• Dispatch No. 5 — Where have I heard this before? — the literal, line-up-the-text copying, shown side by side.
• Dispatch No. 6 — The Third-Party Preissuance Submission — the submission that ran longer than their whole application.
• Dispatch No. 9 — The Overly Broad Claim Slipped Through — the overly broad claim I was trying to stop.
• Dispatch No. 16 — Claim 13 — Again — the applicant conduct that still doesn't excuse the carelessness.
• Dispatch No. 22 — § 102 — Nothing New Here — the anticipation ground competing for space in the petition.
• Dispatch No. 23 — § 103 — Obvious to Anyone in the Field — the "easy § 103" I lead with.
• Dispatch No. 24 — § 112 — They Never Said How — the § 112 travesty that dies when the PGR window closes.
• Dispatch No. 27 — TL;DR; They were too long, so I didn't read them — the same too-long-to-read problem, from the reader's side.
• Dispatch No. 32 — Crime Statistics — the analogy: reporting friction, and the same "let the public log a concern" proposal.
• Dispatch No. 33 — The PGR Petition — the finished petition, cut to fit this cap.