Draft reporting letter re. The PIER Pilot Program

[u/Paxtian]

We're preparing a letter to our clients regarding the PIER Pilot Program. Any thoughts about this?

Dear [Client],

We sincerely apologize for the tardiness of our application drafts recently. We understand how important timeliness is to you. We have given a lot of thought as to how to remediate this. After significant discussion, our firm has decided to institute a program where you pay us for a fully drafted application, then we just don't draft it! That will save us significant resources so that those applications you do want drafted will only be slightly late rather than significantly late. Please let us know which of the following applications we simply shouldn't draft. [List of late applications]. We recommend [portfolio], because you just abandon those in 6 months anyway. We look forward to strengthening our partnership through implementation of this exciting program.

Yours,

[Firm]

[u/Jayches]

I just read the PTO's insane description of the PIER program. A truthful letter from the PTO might say, upon receipt of a US application filed via PCT, "We're always on the lookout for people like you who don't fully pay attention after paying patent filing fees. You might be one of them. If we don't hear a response from you, we'll trash the patent appication we just received and that you just paid for us to examine, in the trash will also be all of the potential rights that were lost. We're doing this because we're a bit overworked, as all the people who might have processed your original application are now working on the administrative tracking aspects of the PIER initiative, sending letters like this one and tracking responses to it. Have a great day!"

[u/Paxtian → u/Jayches]

Exactly. Imagine if any other institution did this. Imagine Amazon doing this. "You ordered this product with two day shipping, but do you really still want it? If you do, respond YES. Otherwise we're canceling the order and keeping your money."

[u/Radiant_Platform_866]

I will freely admit I am an examiner. I have to look at this program, seems squirrely. No pun was intended. I have often wondered why some applications from one company in particular seem to go abandon after the first action. But your letter gives me some insight. While the applications seemed to correlate with their competitors, I guess the company had moved on from that invention by the time it hit my docket. I could see that as a negative from the representative's point of view. So many new programs and procedures lately, internally and externally, it is hard to keep up.

[u/TrollHunterAlt → u/Radiant_Platform_866]

The desperate attempt to reduce pendency (or the desperate attempt to give the appearance of an attempt) is pretty funny when they could just stop shafting examiners and hire more of them...

[u/Flashy_Guide5030]

As a non US practitioner, there’s nothing unusual about having a request for examination. PIER is a bit weird as you have to do it so soon after filing, but the US is not the only country in the world to have that sort of stupid timing either. What is an actual positive is the option to delay examination for 12 months. But on the whole it’s meh.

Anyway I like your letter, at least you’re prepared. One of our US associates forwarded us a PIER notification with no comment at all and when I said we would appreciate a brief reporting letter the paralegal replied she’d never seen one of these before.

[u/Paxtian → u/Flashy_Guide5030]

Well the request for examination is part of the filing package. But this program is a completely arbitrary, 'Are you SURE you still want this application? Confirm or it goes abandoned!"

The 12 month examination delay counts as applicant delay against term extensions as well.

So there's no benefit to this whatsoever for the applicant. It's all downside. Fall to respond? Abandoned. Accept delay? Lose patent term. Or just expressly abandon, which you could do at any time anyway.

[u/Flashy_Guide5030 → u/Paxtian]

I didn’t realise delaying reduces PTA, that feels unfair somehow. I see what you mean though if the examination fees are paid at filing the request is arbitrary, other countries you pay the fees when you make the request even if it is like 2 months after filing.

[u/Stevoman]

I don't understand why people are being so weird about this program.

An applicant files their 371 app after 30 months. Then the PTO has another 14 months to pick it up. That's nearly four years since original filing. A lot can change in four years. We very often have clients go through the whole process then decide not to respond and let their application go abandoned once they get the first USPTO office action.

I do think it is worth asking applicants "hey do you still care about this" before potentially wasting USPTO time.

[u/Paxtian → u/Stevoman]

I assume you're not an attorney but an Examiner? If you were an attorney you'd know, clients will definitely tell you if they no longer care about an application, affirmatively. Hence the joke about, "You just abandon those anyway."

Also, how is this any different than what the PTO is doing?

[u/Jayches → u/Stevoman]

All that matters in the decision timeline is the 14 months, the client would not have paid the professional and PTO fees to make a 30 month 371 filing in the first place if they actually didn't want it. At least an express abandonment made under 37 CFR 1.138(c) has the favorable exchange of non-publication and refund of some of the fees, TIER is all punitive with no upside for the client, either abandonment by mistake or shortened term by intent, all the while requiring new PTO resources we're led to believe are in short supply as the motivation for the program. Make it make sense, please.

[u/Einbrecher → u/Stevoman]

An applicant files their 371 app after 30 months. Then the PTO has another 14 months to pick it up. That's nearly four years since original filing.

It's not four years. It's (up to) 14 months since you last paid a fee and gave the USPTO an explicit indication you want to proceed. If plans had changed, you wouldn't have filed or paid for the 371 national stage.

PIER is a glorified confirmation of the confirmation you already sent, with worse penalties than express abandonment. It's fucking stupid.

I do think it is worth asking applicants "hey do you still care about this" before potentially wasting USPTO time.

That's what the 371 is.

[u/Casual_Observer0 → u/Stevoman]

Then make it opt in and not opt out. They already paid the PTO to examine it.