By Dennis Crouch
The USPTO has released a new notice of proposed rulemaking (NPRM). In the press release, the USPTO indicates a 22% drop in fees for “routine patent processes.” Thus, a patent applicant will see a reduction in costs so long as it does not file any appeals; RCEs; petitions; extensions-of-time; excess claims; etc.
Two big kickers are that excess claim fees and the fees for second or subsequent RCEs are significantly increased. Adding a fourth independent claim will cost $420 (up from about $220 on year ago) to encourage applicants to file only “a prudent number of unambiguous claims.” A second or any subsequent request for continued examination will cost $1,700. That increase is seen as a mechanism for discouraging multiple RCE filing.
The USPTO has already finalized the fee structure for new services being offered beginning on September 16 of this year. (e.g., See 8-things to know about September 16). However, this NPRM also suggests that the post grant fees be adjusted (marginally) downward. That change would take place only after these rules are finalized.
The NPRM is scheduled to be published on Thursday 9/6/12 and the public is given 60-days to comment from that date. Comments go to fee.setting@uspto.gov. (ATTN: Michelle Picard).
/media/docs/2012/09/Proposed_Fee_Schedule.pdf
I would expect that the PTO will make some additional changes to this fee structure in response to comments from patent applicants (and others). The final fee structure will likely be implemented in early 2013. Importantly, the micro-entity fees cannot begin until these rules are finalized.
Note: Regarding the $800 surcharge for second or subsequent requests for continued examination (RCE) filing, the PTO would characterize the change as stopping the subsidy of those filings. Up to now, the low RCE fee has not covered the cost of actually performing the re-examination required in the process. The total cost was subsidized from other fees – primarily maintenance and issue fees. Based upon a rudimentary calculation of costs, the USPTO estimates that the new $1,700 fee is set at a point that simply recovers the cost. Thus, with a bit of sophistry, one could argue that the change in fee is not intended to discourage multiple RCE filings but instead is only intended to stop unduly encouraging the filings.
“None of that changes my original point that people worked so hard to not even read, which is that examining 6 or 7 non-interdependent claims and allowing them all is way more work than examining one independent claim and 5 or 6 dependent claims and allowing them all.”
I can accept that. But it is work that is paid for by the initial filing fee and one should not have to pay excess claim fees to place examined claims in independent form.
Leo, I am thinking of the invention described in the parent* as the invention being claimed in the CIP with variations. For example, in Stempel, the parent* disclosed one example of a invention. The CIP added additional features and claimed the invention more broadly. The reference showed what was described to be in the parent*. The CCPA held that priority of the parent* effectively removed the reference.
*Of course, as Stempel, the priority document was not a patent application but a prior invention date. That was proved by use of a 131 affidavit, and not by benefit of referencing the specification of an earlier-filed patent application. I think it makes no difference whether the prior invention is proved by a 131 affidavit or by reference to a file patent application describing that invention.
3 independent claims, each covering essentially the same thing in a different form.
each set of 6 or 7 is similar to the other sets.
That wasn’t given in the hypothetical, but I’ll grant you it’s a pretty typical drafting practice.
Still, it’s a pretty typical drafting practice, which means that pretty much everybody does it, and the fees are more or less calibrated for that eventuality. That is to say, the fee for three similar claims approximately covers the cost of examining three similar claims. In particular, the filing fees pay for three independent claims.
The only real difference on the given facts is that you can decide to keep only some of the claims, or rewrite only some of them in independent form, after they’re examined but before you have to pay the fee. So don’t take 17 similar independent claims if you only need three of them.
None of that changes my original point that people worked so hard to not even read, which is that examining 6 or 7 non-interdependent claims and allowing them all is way more work than examining one independent claim and 5 or 6 dependent claims and allowing them all.
“He has had to search the prior art for 17 different claim limitations, until he could satisfy himself that they could not be found. It’s a lot harder to not find a limitation in the prior art than it is to find it.”
Not really. There are 3 independent claims, each covering essentially the same thing in a different form. For example, a method, a machine for doing the method and a machine for doing the method expressed in different terms. Each of those has maybe 6 or 7 dependent claims reciting either additional elements or reciting additional details regarding already recited elements wherein each set of 6 or 7 is similar to the other sets. So the bulk of the work is searching 1 independent claim and 7 variations.
Ned, you’re going to have to be more specific. I’m passingly familiar with In re Stempel, but I don’t know exactly which principles you’re talking about.
As you undoubtedly know, you can already get obvious variations of your own invention if you file those claims before the parent is published. At least in the last part of my discussion above, however, I was assuming that the combination of flying saucer and flagtrumenchen was not obvious.
“but neither could you.‘
Exactly. The point to keep in mind is what ‘open-ended” actually entails.
The comprising language does not cover the flaghtrumenchen. It doesn’t mean the flaghtrumenchen inventor can ignore what you have invented, but neither can you ignore what the flaghtrumenchen inventor invented.
Leo, but why should the principles of In re Stempel not also apply when the reference is a statutory bar? I understand the essential concern is that one could potentially extend a patent’s life forever in a system measuring term from the date of issue by filing CIP’s and adding obvious variations to a basic invention. But do the same policy considerations apply in a regime were patent term is measured from the earliest filing date?
Agreed.
Les, Logically yes. Now see Dennis' post on this topic and my reply just now.
That’s correct. But I think anon is saying that the open-ended nature of your first claim doesn’t give you 112 support for features that aren’t described in the original application. You don’t get priority for a flying saucer plus flagtrumenchen from your your original application any more than anybody else does.
That means I might be able to get a patent that covers the flying saucer plus flagtrumenchen, or perhaps one to the flagtrumenchen. In that case, I couldn’t build the flying saucer plus flagtrumenchen without your permission, but neither could you.
Yes it does. In this sense. You cant make a flying saucer with a flaghtrumenchen without my permission until my patent expires because I have a patent on flying saucers.
anon and IANAE are right, Les. It’s possible for your parent application to be used in an obviousness rejection of your CIP claims, where the parent is 102(b) art (but 103(c) eliminates its use as 102(e) art). It’s also possible for intervening art to either anticipate or render obvious your CIP claims.
CIPs have been historically overused, in my view. Speaking from an electrical/mechanical perspective, I think they are sometimes appropriate, but rarely.
If I file a CIP while my first application is pending, and add dependent claims that add seats and landing gear, that’s just icing on the cake.
If you file a continuation, it’s icing on the cake.
If you file a CIP, it might be a whole new cake. See, it’s only a continuation in part, and if the new matter is enough to in-part a new filing date to your claim, the novelty of the parent claim is as worthless as the novelty of a similar claim in a cited prior art reference. Because novelty is time-dependent.
Les,
The only thing stopping you Les is if your own art (application with A) is prior art to you.
What Newman seems to make a big deal of is that the CIP correctly links to the priority of that A app, which removes the “only thing stopping you.”
However,…
Comprising may be open ended, but it is not universally open ended. It is only open ended to those things that do not expand your invention which do not colorably change the invention.
For example, the open ended “comprising” cannot capture your flying saucer with a flaghtrumenchen, if the flaghtrumenchen was invented after the parent app with A.
The newness or patentability of A encompasses A+B, especially if as in most non-drug cases the claim for A is open ended. Embedded in the meaning of the word “comprising” is –and combined with anything else–.
If I’ve patented my flying saucer without mention of the seating arrangements, you cant build one with seats to get around my patent. If your flying saucer has at least 3 anti-gravity engines and the other things listed in my claim, then you are infringing.
If I file a CIP while my first application is pending, and add dependent claims that add seats and landing gear, that’s just icing on the cake.
Those claims would have been allowed even if they were presented in the original application as independent claims, because the examiner would have found no art on the flying saucer bits and could not support an allegation of obviousness in view of the existence of seats or landing gear.
Likewise they are patentable in the CIP, whether the examiner finds them in intervening art or art even earlier than the parent because the flying saucer bits were new on the date the flying saucer bits were disclosed.
Actually, I have gained nothing. And the world has lost nothing. You would be infringing my first patent if you build one with seats or not. Additionally, since i am claiming the benefit of the parent, my CIP expires on the same day as the parent.
Gotcha, thanks.
Are you assuming that A + B is not enabled with the parent app in which A is first claimed?
I’m taking the facts as given in Ned’s hypothetical. Enablement is not relevant.
“The hypothetical is that the dependent claims all contain new matter. A reference dated after the filing date of the parent application, but before the filing date of the CIP, seems to me to be good prior art against the dependent claims even if the parent claim is allowed. The effective filing date of the parent claim is the filing date of the parent application which is before the prior art date of the reference. The effective filing date of the dependent claims is the filing date of the CIP, which is later than the effective date of the reference.”
IANAE,
Are you assuming that A + B is not enabled with the parent app in which A is first claimed? (keeping in mind that such enablement might be within the capacity of PHOSITA at the time of the parent A filing).
If A is new, then A + B must aslo be new, no matter how old B is.
If A is new when the claim to A is filed (by which I mean its priority date), that doesn’t mean that A+B is new on the later date when the claim to A+B is filed.
No. Im not aware that the concept Im refering to have ever been challenged. Its just logic. If A is new, then A + B must aslo be new, no matter how old B is.
Les, OK. Can you cite me a case on point. You might want to review a post I made to Paul Morgan right on point in the other thread I discussed. The cases he relied on were not exactly on point.
Ned, the dependent claims are allowable even if the landing gear was known prior to the priority date of The Parent application. The Allowable subject matter of the independent claim makes the dependent claim allowable.
He is not right. 1 pays for that very examination when1 files the application. The Standard fees cover the examination of 3 independent claims And 20 claims total.
But the point is that the work already done seems to draw on a false distinction that dependent claims are not examined if they are only dependent claims.
No, I don’t think so. IANAE’s point rests on two premises, both of which I think are supportable. The first one is that allowing a dependent claim that depends from an allowable parent is really easy. The second one is that rejecting any claim, including dependent claims, is easier than allowing an independent claim, since allowing the independent claim means that you’ve successfully “proved” a negative, i.e., that no prior art anticipates or renders obvious your claim. In Les’s scenario, the examiner had to prove this negative for 17 separate claims, since none of them had an allowable parent claim. That’s certainly comparable to the work required to examine and allow 17 independent claims. So, IANAE’s point doesn’t assume that dependent claims “are not examined,” but that examining a dependent clam is much easier, on average, than allowing either an independent claim or or a dependent claim that must stand on its own. If the examiner has properly allowed 17 distinct claims, he or she has really worked hard, much harder than in a typical case where 1 or 2 indepedent claims are ultimately allowed, along with one or two dozen dependent claims that come along “for free.”
What if the applicant instead is able to amend the independent claim? Does the work on examining the (now returned to dependent claim status) 17 claims disappear? Is it materially any different?
That’s a fair point – of course that work doesn’t disappear. But the PTO needs a fee structure that is relatively simple and that is reasonably reflective of the work that is involved. It doesn’t have to be perfect. We might be able to come up with a more accurate structure, but it would probably be more complicated. In your scenario, we might conclude that the PTO didn’t charge enough. But that’s probably at least partially offset by those many cases where all of the claims are rejected fairly easy, and the case abandoned, and those cases where only one independent claim ultimately survives.
And by the way, thanks for the snark-free discussion. Seriously.
LB
“Seems pretty clear to me”
Then you ignored what IANAE actually said about that:
“That’s what IANAE said.
No, it’s really not.”
You are saying it is pretty clear that IANAE is saying what he expressly denies he is saying. If it is so clear to you, then why are you saying the opposite of what IANAE is saying?
As I said, the problem was not in my reading.
Leopold,
“IANAE’s point (I believe) is that it’s hardly fair to complain about the excess fees in this situation, since you’re merely being asked to pay for work the examiner has already done.”
But the point is that the work already done seems to draw on a false distinction that dependent claims are not examined if they are only dependent claims. The extra fees coming merely from the procedural aspect and not from what it takes to examine anyway – the very opposite of the conclusion reached (and seemingly placing form over substance).
What if the applicant instead is able to amend the independent claim? Does the work on examining the (now returned to dependent claim status) 17 claims disappear? Is it materially any different?
Les, you are right to the extent a reference is prior art to the parent claim. I changed the facts just a bit where the reference showed a flying saucer, for example, but the date of that reference was after the filing date of the parent but before the filing date of the dependent claims that added new matter, e.g., rubber wheels.
Thus, claim one might be allowable because the prior art reference showing a flying saucer is not prior art with respect to claim one. But that does not mean that the reference is not prior art against the dependent claims that rely on new matter. Thus you might have the weird situation that claim one might be allowable over the prior art; but claim 2 may be unpatentable because of the different effective priority dates allowing the flying saucer reference to be good prior art against it.
It is not just a coincidence that I raised this issue here because today in the discussion of the Sanarus case in the blog post by Dennis regarding negative limitations, judge Newman apparently adopted position that such a dependent claim would have a different effective date taken element by element, such that the claim element to the flying saucer would have an effective filing date in the parent. I have never seen such a case however. But it might be worthwhile discussing whether this is proper or not proper.
Any dependent claim can recite a known detail and be allowed because the claim includes the novel stuff of the independent claim.
Claim 1 : A flying saucer comprising:
At least 3 anti gravity engines;
at least 3 gimbals operatively coupled to the respective ones of the anti gravity engines;
a passenger compartment attached to the gimbals..
Claim 1 is allowable because anti gravity engines are new and not obviousl
Claim 2: The flying saucer of claim 1 comprising:
landing gear with rubber wheels.
There is nothing new about landing gear with rubber wheels. But a flying saucer with rubber wheels in new and not obvious because it includes anti-gravity engines.
Consider a CIP. The independent claim is supported in the parent; but the dependent claims adds new matter. The reference date is good against the CIP date, but not against the earlier parent date.
Seems the efficient thing for the examiner to do is search art up to the CIP date, and apply any art dated after the parent only to claims where the priority is in doubt. That should cost him about the same amount of effort as a regular search, so the claim fees should be approximately fair. Let the applicant defend his priority on a claim-by-claim basis.
I’m sure we can all think of weird corner cases where the claim fees don’t strictly align with the amount of effort demanded of the examiner. What if the five independent claims are nearly identical, or mutually obvious? What if each of them has an identical set of fifteen dependent claims?
Those are probably examples where the agent could have drafted more compactly, but they don’t make the claim fee structure fundamentally unfair. It’s meant to be approximately fair, and to apply to all applications evenly. It can’t possibly be exactly equally fair to every application, and we shouldn’t insist on perfection.
Les, I am not so sure that you are correct. The hypothetical is that the dependent claims all contain new matter. A reference dated after the filing date of the parent application, but before the filing date of the CIP, seems to me to be good prior art against the dependent claims even if the parent claim is allowed. The effective filing date of the parent claim is the filing date of the parent application which is before the prior art date of the reference. The effective filing date of the dependent claims is the filing date of the CIP, which is later than the effective date of the reference. It seems to me that the dependent claims might be invalid over prior art while the dependent claim may not be.
Since you apparently disagree, can you explain your theory?
Perhaps I can help, since I thought IANAE’s point was reasonably clear, even without clairvoyance.
IANAE was responding to Les’s hypothetical, which said that 17 dependent claims were allowed, while the independent parent claims were rejected. Assuming the examiner did his job properly, this suggests that the examiner analyzed 17 distinct points of patentability with respect to the prior art, since each claim was allowable over its unallowable parent claim. Note that IANAE left the assumption of the examiner doing his job properly unstated, but that is strongly implied by his statement about this examination being just as much work as examining 17 independent claims.
IANAE’s point (I believe) is that it’s hardly fair to complain about the excess fees in this situation, since you’re merely being asked to pay for work the examiner has already done. Plus, you get the bonus of getting to pick and choose which claims you really want to pay for after examination, rather than before (cf. restriction practice). I think he’s right.
All of my comments in this sub-thread thus far are in regard to art rejections. Of course claims dependent upon an allowed claim can be rejected for 112 issues etc.
In your specific example, the dependents are allowed by virtue of there dependence on an allowed claim. When I said they can only have enhanced allowability, I meant they can’t have reduced allowability. I thought it would go without saying that they can have zero additional allowability.
I got an insult and no clarification.
In fact, anon, you asked the following question:
Are you saying that dependent claims are not examined to the same level as independent claims on an everyday basis?
and you got the following answer:
No
Seems pretty clear to me. If you have a more specific question or observation to make, then spend some time writing a comment wherein the point of concern to you is made with at least the degree of clarity that you expect in the response.
Les, “…the independent claim is allowed. In that case, the dependent claims do not need to be considered in light of the art because they can only have enhanced the allowablity by virtue of their additional recitation.”
Might be right in context, but all dependent claim are not equal. Consider a CIP. The independent claim is supported in the parent; but the dependent claims adds new matter. The reference date is good against the CIP date, but not against the earlier parent date.
What is your view then? Ignore the dependent claims?
Wow, IANAE, and perhaps you should actually read my post.
My response was seeking clarification from you.
I got an insult and no clarification.
The point of this is that I cannot make sense of what you post. Clearly there is a step missing from the “mentioning both of those situations” to arriving at the conclusion that you have. It wasn’t a reading problem.
I am not clairvoyant and need your help in understanding what you wrote. Can you restate your original post and identify clearly your reasoning?
That’s what IANAE said.
No, it’s really not.
You are confusing this situation with the one where the independent claim is allowed.
No, I’m not. In fact, I specifically mentioned both of those situations.
I think you (and anon) might further Dennis’ goal of upping the signal/noise around here by actually reading and understanding other people’s posts before you respond to them.
You understand IANAE just fine. That’s what IANAE said.
The Examiner is not allowed to reject dependent claims based on a rejection of the base claim. The further limitations recited in the dependent claims must be considered as they may sufficiently narrow the claim to read away from the art directed that the independent claim. The examination effort called for in my example is the standard effort expected by the rules and paid for by the standard filing, search and examination fees.
You are confusing this situation with the one where the independent claim is allowed. In that case, the dependent claims do not need to be considered in light of the art because they can only have enhanced the allowablity by virtue of their additional recitation.
I am not sure I understand the point that you are making IANAE.
Are you saying that dependent claims are not examined to the same level as independent claims on an everyday basis? I certainly hope that is not what you are saying.
After prosecution, an examiner may find that all 17 of the dependent claims are allowable but that the 3 original independent claims read on the prior art and are rejected.
This is the interesting bit of your hypothetical, right there.
The examiner has independently examined 17 claims and found them all to be allowable. That’s just as much work as if they had all been presented as independent claims at filing. He has had to search the prior art for 17 different claim limitations, until he could satisfy himself that they could not be found. It’s a lot harder to not find a limitation in the prior art than it is to find it.
That’s way more effort than rejecting a dependent claim based on the rejection of its parent claim. It’s also way more effort than allowing a dependent claim based on the allowance of its parent claim. Sure, no “further” examination will be done on those claims, but only because the examination has already been done, in advance, whether or not you ultimately decide to keep and pay for all those claims.
I think the excess claim fees are justified in this hypothetical, or at least as justified as they are in the general case. It’s certainly not a fundamental or inherent unfairness in the fee schedule.
Besides, you should consider yourself lucky that you didn’t get a 17-way restriction.
There has been, and there will continue to be, an inherent unfairness in the fees that are charged for claims.
Currently, for the basic filing, examination and search fees an applicant may present for examination 20 total claims with 3 of those claims being independent. Exceeding either of those thresholds triggers the requirement to pay additional fees, ostensibly to cover the cost of examining additional claims.
This fee policy leads to the following unfair absurdity.
Consider the applicant that files an application with 3 independent claims and 17 dependent claims, with each dependent claim depending directly from an independent claim.
After prosecution, an examiner may find that all 17 of the dependent claims are allowable but that the 3 original independent claims read on the prior art and are rejected.
In order to accept the allowed subject matter, rather than argue for the allowability of the 3 original independent claims through filing an RCE or Appeal and to receive the protection that the office agrees she is entitled, the applicant must place all 17 claims in independent form. This means she must pay excess independent claim fees for 14 claims, even though no further examination will be done on those claims other than verifying that the presented amendments do actually simply place the dependent claims in independent form.
At the large entity fee of the subject proposal, that amounts to 14 x $420 or $5,880. Even at the micro entity rate, the applicant would be required to pay 14 x $105 or $1470!. The Office has not justified these outrageous charges for placing already identified as allowable claims in independent form. Indeed, it is respectfully submitted that there can be no justification for such charges.
Moreover, wont such outrages charges increase the burden on the examining corp and the Board of Appeals as applicants find the relative cost of Appeal or continued prosecution to be low compared to excess claim fees?
We respectfully submit that this is inherently unfair and respectfully request that the fee schedule be changed to indicate that there is never a claim fee charged for simply placing an already allowable dependent claim in independent form. Alternatively, we would ask that the office justify a $5880 fee for placing allowable claims in independent form.
We would also ask that you estimate and consider how much it would cost or costs a micro entity or small entity to determine that one could rightly claim such status.
blah blah blah unnecessarily narrow blah
Why gripe at us? Get Congress to abolish 102 and 103 if you can’t handle it.
OK. Still if an RCEs cost 2X the cost of a continuation (I don't know if that is the case here or not) then folks will simply file continuations as they did not that long ago.
My favorites are the ones that don’t even bother to update a rejection with the amendments to the claims. You KNOW you got your money’s worth and due consideration on those.
SECONDED. To say we’ve been “subsidizing” 2d and subsequent RCEs is preposterous given the total lack of effort shown by some examiners, including SPEs. No burdensome reexamination is performed. I frequently read the EXACT SAME TYPOS in actions after RCE that I saw in a first OA. Such examiners can also make scheduling an interview painfully difficult.
While the usual jokes about “government work” apply, the quality of product the USPTO habitually remits during prosecution would embarrass most high school students in terms of composition, proofreading and presentation. Applicants: If you aren’t interested in moving toward unenforceably narrow claims within two opportunities to amend after a rushed first action that will haunt you through the first RCE, don’t expect to get your money’s worth.
“meaningful” claim language is in the eye of the beholder. Examiners usually want claims that are unnecessarily narrow, while applicants want broader claims.
I can see where claims might be more closely tied to the specification, but as you know, the specification need only enable with some embodiments, not all possibilities.
Not to worry, the new fees increase the cost of appeals too. Well, actually they reduce the cost of filing the appeal and brief (to $1000 from $1240), but add a new $2000 fee for forwarding the appeal, e.g. sending it to the Board if the Examiner doesn’t withdraw the rejection because of the appeal brief but instead files a response.
RCE’s a re usually filed in our practice when an Examiner is being unreasonable. With the newly proposed fee, just going to Appeal, while slower, will start to seem reasionable. At least your case will be considered by people with a good grasp of the law. I predict appeals, and possibly pre-appeal conference requests, will increase.
The few multiple RCE cases I’ve had (aside from ones filed after allowance because of newly cited art in related cases) are usually because I can’t get interviews as frequently as I would like (e.g., after final) or the Examiner refuses to involve a supervisor in the interview, who is then normally blamed for refusing to give an interview or refusal to allow the case (e.g., “I’d allow the case/give you the interview, but I can tell you that my supervisor will never allow it”). These are usually the cases I flag for appeal, but the client may not want to pull the trigger on it immediately. Or they are cases I’ve inherited where the Examiner is already concluded that the applicant doesn’t want to advance the case to allowance…hence, the reluctance to cooperate. I always find this frustrating with inherited cases that I inherit after final, because then I file an RCE just guessing at what might be a sufficient amendment (or even sometimes guessing at what the real issue is; it’s seldom that clear on review of a convoluted history).
Thankfully, I’ve found most Examiners will grant an interview after final. Which they clearly don’t have to do, but it’s always very appreciated. (and very unappreciated when they don’t).
Don’t forget that with an RCE you don’t have to pay excess claim fees again. So if the application has excess claim fees, you may want to file the RCE. Cost analysis must be done.
So a fee is designed to discourage unreasonable RCEs. And they are jacking up the appeal fees. What are they doing to discourage crappy rejections and examiners who unreasonably cling to them? They are really pushing patent applicants into a corner. This together with many recent developments in the law is drastically reducing the value of filing a patent application.
My understanding was that that the QPIDS could only be used after the issue fee has been paid.
My company has filed numerous RCEs to get prior art cited after NOA thanks to the McKesson and Larson decisions (maybe nearly 50 in the past 3 years). We have to file references cited in sibling cases even though they are usually before the same examiner.
We file the RCE and a new NOA is issued usually within 3 months.
This problem could be solved if the PTO extended the 3 month rule to include US related apps as well as foreign apps.
The difference is only $100 (1600 for a new continuation application versus 1700 for second RCE). A substantial number of cases include an excess claim fee that would make the new application actually more expensive than an RCE.
Ned think about the stats game involved in all this. Continuations are always treated as new cases (even the examiners get the full counts for working on continuations as apposed to RCEs). A lot of stats are being broken down for pending time to include RCEs, even though the PTO hadn’t done that in the past. To make the stats look better you need to force everyone to file less RCEs and increase allowances and abandonments (or as the people in the TV The Wire would say, this is how the PTO is “juking the stats”). So the current incentives for examiners are to sit on RCEs and they’re disincentivising the use of RCEs by applicants by removing the subsidy. In total this makes RCEs less appealing and forces attorneys to do a better job of getting to allowable subject matter on the first round of prosecution.
If RCE fees are higher than continuation fees….
Do they really want that?
On this note, has anyone tried the QPIDS program that allows you to file an after-NOA IDS without an RCE?
Although not discussed in the NPRM, there is still no charge for abandoning your application. We'll see how folks react, but an intent of the new fee structure is certainly to encourage more early interviews and more abandonments. Appeal fees are also up significantly. However, the structure is somewhat changed in a way that will shift some behaviors.
A lot of RCE’s are to blame because practitioners don’t interview the cases soon enough. Maybe clients will demand interviews when they see the RCE fees jump.
I think that you'll only find this occurring with patent applications that are known to be valuable. In that case, the $800 fee is rather minimal.
I did an unusually large amount of opinion work in the past few years, so I had the opportunity to comb through many file histories of patents held by highly litigious entities. One thing I noted was a skyrocketing practice of filing numerous RCEs after allowance, each one to submit additional references to be considered on the record. It wasn’t uncommon to se ten or more RCEs after allowance for some entities.
“Regarding the $800 surcharge for second or subsequent requests for continued examination (RCE) filing, the PTO would characterize the change as stopping the subsidy of those filings. Up to now, the low RCE fee has not covered the cost of actually performing the re-examination required in the process.”
Lulz. How much does it actually cost to have the examiner find the electronic copy of the last OA, and if he/she is not too lazy, change the date, print out a new copy, and turn it in for counting?
“Thus, with a bit of sophistry, one could argue that the change in fee is not intended to discourage multiple RCE filings but instead is only intended to stop unduly encouraging the filings.”
Thank goodness sophistry is one thing the PTO is not in short supply of.
I understand – I guess that they will simply be paying more…
Thanks. I’m fortunate to have several large clients who screen their invention disclosures well and are willing to fight to get something close to what they’re entitled to.
What Director Kappos is hoping is that patent applicants will be (1) more likely to conduct meaningful examiner interviews early in the process and (2) self-limit claim scope to something more meaningful.
If anything, it’ll make me push the appeal more instead of the RCE.
You are correct, it’s not less expensive overall. However, convincing a small client to commit to the large up-front of an appeal after just one real bite at the apple has proven difficult. I used to get a lot of allowances on a first RCE, say, 2-4 years ago. I feel like that is changing.
RCE, appeal, or abandon. Those are your options. Appeals are cost prohibitive for small inventors and startups. … That second RCE is usually where I remove unnecessary concessions that the examiner did not consider, and get the claims how I want them for appeal.
Is that approach really less expensive overall for the client? I think I’ve filed maybe 4 RCEs total in the last 5 years, and never a second one, so I don’t see this fee change affecting my approach at all.
I'll try to look into this again and see if I can discern from the data why most 2nd RCEs are filed.
Question is – are you going to change your practice because of the increased fee?
I don’t know about others, but the few examinations that I have seen that fit this category do not show indications that the applicant has been “not engaged.”
I think I might have filed two RCEs for a single application once in the past ten years. And it was probably to get some art cited before issuance (there are other ways to do that now).
I agree with Dennis that multiple rounds of RCE filing suggest a failure to communicate which almost surely could have been addressed earlier.
Anon – Of course, the Examiner should have been engaged from the beginning as well.
Yes – the maintenance fees are going up considerably. All of the "ordinary" prosecution fees are being subsidized (except for the issue fee).
RCE, appeal, or abandon. Those are your options. Appeals are cost prohibitive for small inventors and startups. The push to make RCE’s cost prohibitive is bad policy based on false assumptions (e.g., that the applicant has not engaged the examiner).
That second RCE is usually where I remove unnecessary concessions that the examiner did not consider, and get the claims how I want them for appeal. Assuming, of course, that my client isn’t tapped out from the first few rounds.
A $1 million fee would be a different matter.
On Tue, Sep 4, 2012 at 11:37 AM, Dennis Crouch <dcrouch@gmail.com> wrote:
I don't think that the USPTO is going to run into Tafas-style problem here since the added fee only takes it up to a cost-recovery level.
I don't think that the USPTO is going to run into Tafas-style problem here since the added fee only takes it up to a cost-recovery level.
“applicant should have fully engaged the examiner to make sure that everyone is clear on what’s going on.”
This seems to beg the point that the patent applicants are not engaged and thus the high fee as “punishment” is morally acceptable.
I don’t know about others, but the few examinations that I have seen that fit this category do not show indications that the applicant has been “not engaged.”
Since at least nominally the subsidizing by the patent maintenance fees is ending, shouldn’t those fees be going down? Last I checked, weren’t those fees also going up appreciably?
Now – to be clear, we're talking about the third go-round. By that point, the patent applicant should have fully engaged the examiner to make sure that everyone is clear on what's going on.
Amen to the quality review.
1700 is a lot for the consideration applications are getting these days. If “quality = reject, reject, reject” weren’t coming back into fashion, it’d be one thing, but I’ve been seeing examination practices that warrant adjusting examiner behaviour, not applicant behaviour.
On June 20, 2012, Director Kappos testified before the Senate Judiciary Committee that “The Patent Public Advisory Committee (PPAC) held two public hearings on the proposed fee schedule and will issue a report to the USPTO before we publish our Final Rule, detailing its comments, advice,
and recommendations.”
Where’s the PPAC report?