When a deadline is missed or a requirement passes without response, learned patent counsel file a petition seeking relief. Experience with petitions has shown that the contentions that often fail are: blaming the USPTO or claiming that it contributed to the problem, arguing against the unfairness, or expressing surprise or dismay about the situation. The more effective approach is to unsheath one’s sword, then fall forward upon it. Blame thyself, grovel, perhaps do some self-flaggellation – never deny, admit admit – that you’re to blame. If you don’t, then the Petition likely gets denied, and then you’re really stuck.
Consider the malpractice suit, Landmark Screens v. Morgan Lewis, 5:08CV2581 (N.D. Cal.). The PTO, in its increasingly common effort to get additional filing fees, issued a restriction requirement. Counsel divided out claims to be filed as a second application, but failed to include the original spec, and used an out-fo-date form for incorporating the earlier application by reference. The first application issued before the notice of missing parts went out. The incompleteness of the divisional filing prevented it from being accorded a filing date, and the issuance of the earlier application meant no application with the earliest filing date was pending.
The Morgan Lewis attorney filed a petition, which relied largely on the “I” defenses: intent, interests of justice, and indicia of completeness. The petition was not accompanied by an affidavit, or an explanation accepting blame. The petition was denied, and the filing date lost. That argument in the petition about the USPTO taking 10 months to send out the notice of incompleteness was acknowledged to be “unfortunate,” but that did “not shift responsibility” (or the misfortune) to the PTO. Same too with the ‘intention’ and ‘indicia’ contentions – “The applicant must be ‘vigilant and active’ in complying with” patent prosecution requirements. That translates to: accept blame, call yourself negligent or non-vigilant.
The countervailing concern is that signing an affidavit that admits screwing up could invite a malpractice claim. But then, if the petition is denied, such a claim is to be expected. If the petition is granted, however, then it’s only client comforting time or a public relations issue, instead of facing up to a client’s publicly-filed complaint.