Patent Baristas

The USPTO is looking for feedback from the public to help reduce their backlog of patent applications associated with a Request for Continued Examination (RCE).  There is currently a backlog of over 103,000 applications related to RCEs.

You can see the past two year trend at the USPTO Dashboard.

An RCE is a request by an applicant to reopen prosecution of the patent application after prosecution of the application is closed. That is, after the Examiner closed it by issuing a second action as final thus forcing the applicant to file an RCE in order to be allowed the privilege of responding and amending the claims to get them into allowable condition.

MPEP 706.07(a) governs when it is “proper” to make a second action final. This states that under present practice, “second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims, nor based on information submitted in an information disclosure statement filed during the [time].”

Furthermore, a second or any subsequent action on the merits in any application will not be made final if it includes a rejection, on newly cited art.

This sounds good in theory but really means you get exactly one shot at amending an application after getting the search results and first action on the application.  You have to get it absolutely perfect or you’re in final land.  You don’t get a chance to amend a second time after going over it with the examiner.  Being close doesn’t count.

The real answer here is to give Examiners leeway to have some back-and-forth to get the application right without slamming the door shut with a second action final.  A second action final isn’t some sort of universal truth handed down on a mountain top.  Obviously, the PTO has to stop incentivizing examiners to close prosecution.

The USPTO is asking for input from the public to help understand the reasons for an RCE and to design new programs and initiatives aimed at reducing the need for an RCE.  Note, they have implemented the After Final Consideration Pilot (AFCP) to help somewhat.

How to Help?  Answer the USPTO’s list of 11 questions:

1. If within your practice you file a higher or lower number of RCEs for certain clients or areas of technology as compared to others, what factor(s) can you identify for the difference in filings?
2. What change(s), if any, in USPTO procedure(s) or regulation(s) would reduce your need to file RCEs?
3. What effect(s), if any, does the USPTO’s interview practice have on your decision to file an RCE?
4.  If, on average, interviews with examiners lead you to file fewer RCEs, at what point during prosecution do interviews most regularly produce this effect?
5. What actions could be taken by either the USPTO or applicants to reduce the need to file evidence (not including an IDS) after a final rejection?
6. When considering how to respond to a final rejection, what factor(s) cause you to favor the filing of an RCE?
7. When considering how to respond to a final rejection, what factor(s) cause you to favor the filing of an amendment after final (37 CFR 1.116)?
8. Was your after final practice impacted by the Office’s change to the order of examination of RCEs in November 2009? If so, how?
9. How does client preference drive your decision to file an RCE or other response after final?
10. What strategy/strategies do you employ to avoid RCEs?
11. Do you have other reasons for filing an RCE that you would like to share?

Your answers to some or all of these questions might help.  Feedback can be provided through any of three means:

Your comments or answers to the questions related to RCE practice can be sent to rceoutreach@uspto.gov.

IdeaScale is a Web-based collaboration tool allowing you to post comments on RCE practice, and view and respond to comments made by others.

The RCE Outreach effort will also include a series of events to share ideas, feedback, experiences, and insights on RCE related prosecution strategies. The following events are scheduled:

• February 20 – Santa Clara University School of Law, Santa Clara, Calif. – Roundtable from 9 – 11 a.m. PT and focus session from 2 – 4 p.m. PT
• February 26 – Southern Methodist University, Dedman School of Law, Dallas, Texas – Roundtable from 9 – 11 a.m. CT and focus session from 2 – 4 p.m. CT
• February 28 – New York University School of Law, New York, N.Y. – Roundtable from 9 – 11 a.m. ET and focus session from 2 – 4 p.m. ET
• March 6 – USPTO Headquarters, Alexandria, Va. – Roundtable from 9 – 11 a.m. ET and focus session from 2 – 4 p.m. ET
• March 8 – Chicago-Kent College of Law, Chicago, Ill. – Roundtable from 9 – 11 a.m. CT and focus session from 2 – 4 p.m. CT

The USPTO’s Invitation to Participate in Roundtable and Focus Sessions on RCE Practice provides further information on the above events, including how to participate.

USPTO Extends the RCE Outreach Comment Period

On December 6, 2012, the USPTO published a request for comments in the Federal Register soliciting public feedback in an effort to better understand the full spectrum of factors that impact the decision to file an RCE. The USPTO is extending the comment period to provide interested members of the public with an additional opportunity to submit comments to the USPTO.  The new deadline for receipt of written comments in response to the December 6, 2012 Federal Register publication is March 11, 2013.