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Does the USPTO owe me any form of compensation if they failed to follow a requested “suspension of action” option, when now it's too late to fix?

Ask Patents Asked on October 3, 2021

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:
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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]

One Answer

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.

Correct answer by George White on October 3, 2021

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