An early action problem under first to file? (or, Second Action Surprise - you lost the race!)

Is there an early action problem under a first-inventor-to-file system?  How comfortable will you feel when you receive an Office action based on a patentability search conducted prior to 18 months from your filing date?

Given that an Examiner can only cite public documents in an Office action, an ‘eclipse period’ is created when the Examiner conducts his patentability search prior to 18 months because any applications filed before your application that had not been published prior to the search are missed.  Under these circumstances, an “early” first action could be issued without the 102 citation (because the art is not yet public and can’t be cited).  After the applicant spends time and money responding to the early action, a subsequent action can be issued that contains the 102 citation (assuming the art has since been published).

Surprise!

Big deal, you say?  Remember, the invention is defined by the claims and, as the second inventor to file, you can always amend your claims to pursue other inventions or claims of narrower scope.  The kicker?  Remember that patent term is measured from the filing date.  So, the inefficiency of the early action problem could affect patent term on any patent(s) to which you are rightfully entitled.  Introducing an extraneous action and response into the prosecution cycle could trim several months off of a patent term.

Take the example in the diagram (download a .pdf here).  If you file an application at 0 months and another inventor files first at -1 months, he is entitled to “the patent” under a first inventor to file system.  But when are you made aware of this?  When does the Patent Office search for the 102 art?  Let’s assume Examiners only search issued patents and published applications.  If the Examiner issues an “early” first action on your application at 12 months, his search missed the application of the first inventor to file because that application had not been published at the time he conducted the search.  When does the Examiner notify you of this invalidating art (really, when does he become aware of it)?  When he updates his search later, probably when he’s issuing a second action.  Meanwhile, you wasted time and money responding to the “early” action that you may have elected to ignore had you known about the 102 art, allowing the application to become abandoned.  Worse yet, you may have chosen to amend your claims to pursue a different invention for which you are the first inventor to file, and the patent term clock has been ticking all the while.

The problem assumes, of course, that the Office issues the first action prior to 18 months from the filing date of your application.  In theory, if the first action is issued after 18 months, all applications filed on the same date as or prior to your application were public and available to the Examiner at the time of his patentability search.  It also assumes that the Office does not begin conducting “first inventor” searches of unpublished applications prior to issuing an early action.  Even if the Office began conducting such searches, their value, I think, would be limited because the earlier application could not be cited until it became public.  Maybe, if the Office did conduct these searches, the Examiner would move your application back in the queue, delaying the first action until the 102 art can be cited.

Is the “early” first action such a mythical creature that this problem is largely academic?  I’m not sure, but I think everyone is interested in decreasing pendency times and does not wish to set up a system that discourages the issuance of early actions.

Could you “check a box” on the application transmittal form that basically instructs the Office to refrain from conducting its initial patentability search until after 18 months?  Is a request for examination system in our future?  Is the risk so minimal that applicants simply accept it?

As an aside, I calculate the eclipse period to be [18 months – (number of months between your filing date and the date of the Examiner’s patentability search)].  For a search conducted 12 months after your filing date, the eclipse period is 6 months.