By Dennis Crouch
USPTO Deputy Director Teresa Stanek Rea recently published a notice and RFC on the future of Requests for Continued Examination (RCEs). In my view, RCEs are not particularly a problem per se, but instead RCEs are a symptom of a troubled application-examination complex that typically requires multiple rounds of negotiation before the applicant and examiner agree on the appropriate scope of protection. That said, RCEs serve as a good breakpoint for discussion because they are filed after at least two formal rounds of rejection. Reducing the number of rounds of formal negotiation is an important key reaching the PTO's stated goals of pendency reduction. RCEs also win the attention of applicants (because of the fees due) and PTO management (because of the credits owed to examiners). Importantly, the current user fee charged for an RCE does not cover the expected cost of two additional rounds of examination.
In 2007 the USPTO unsuccessfully pushed a set of rules that would have limited the number of RCEs that could be filed in a given application. Upon taking office as USPTO Director in 2009, David Kappos withdrew those publicly maligned rules. That decision returned us to our current baseline that allows a patent applicant the right to file an unlimited number of RCEs. If the recent PTA case of Exelixis holds, a patent's term will be generously extended based on a guarantee patenting within three-years – even when multiple RCEs are filed by the patent applicant.
Over the past three years, RCE filings have remained fairly steady – around 155,000 per year. However, because of a strategic decision to preferentially focus on unexamined applications, the backlog of RCE applications has grown to over 90,000 pending applications. Deputy Director Rea writes that the RCE backlog "diverts resources away from the examination of new applications." Part of limited growth of RCE filings is likely due to some efforts by the PTO such as the Quick Path Information Disclosure Statement (QPIDS) pilot program and the After Final Consideration Pilot (AFCP). However, the PTO does not see these programs as sufficient.
The PTO has identified that there is a problem, but is asking for input from the patent law community in order to identify appropriate solutions. As guidance, the PTO has generated the following questions, noting that "the Office is particularly interested in receiving information that facilitates an understanding of filing strategies related to RCEs."
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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?
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What change(s), if any, in Office procedure(s) or regulation(s) would reduce your need to file RCEs?
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What effect(s), if any, does the Office's interview practice have on your decision to file an RCE?
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If, on average, interviews with examiners lead you to file fewer RCEs, at what point during prosecution do interviews most regularly produce this effect?
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What actions could be taken by either the Office or applicants to reduce the need to file evidence (not including an IDS) after a final rejection?
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When considering how to respond to a final rejection, what factor(s) cause you to favor the filing of an RCE?
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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)?
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Was your after final practice impacted by the Office's change to the order of examination of RCEs in November 2009? If so, how?
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How does client preference drive your decision to file an RCE or other response after final?
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What strategy/strategies do you employ to avoid RCEs?
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Do you have other reasons for filing an RCE that you would like to share?
In addition to the normal written comment submission process, the PTO is also accepting comment through a collaborative tool known as IdeaScale that allows for comments on comments. See http://www.uspto.gov/patents/init_events/rce_outreach.jsp.
2. What change(s), if any, in Office procedure(s) or regulation(s) would reduce your need to file RCEs?
Stop rushing to finality. Follow MPEP 706.07: Before final rejection is in order a clear issue should be developed between the examiner and applicant.
In a second action final system, meeting this recommendation would require that a clear issue be developed in the first office action. This is almost never the case. Nothing is made clear in a document that is generated by pasting in claim language and inserting paragraph numbers with little or no explanation as to why the paragraphs are being cited. Yet the office pretends that that such actions are clear and issues second action finals 90% of the time. Even if the first action is articulate, the issues most likely can not be clear until after the examiner has responded to Applicant’s replying arguments. The only way MPEP 706.07 can be followed is in a three action minimum system. The only exception is if the first action clearly presents anticipating art.
Remember: Haste makes Waste.
3.What effect(s), if any, does the Office’s interview practice have on your decision to file an RCE?
If an interview leaves me with the impression that a reasonable amendment or the Examiner’s reconsideration of an argument will take the application closer to allowance, I’ll file a paper and an RCE. If the interview leaves me with the impression that the Examiner is wrong and/or unreasonable, I’ll file an appeal.
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?
After final rejection, of course.
5. What actions could be taken by either the Office or applicants to reduce the need to file evidence (not including an IDS) after a final rejection?
Don’t go final before a third action. The need to file evidence is not apparent until the Examiner clearly articulates a defensible rejection. This almost never happens and certainly rarely happens before a second action. Accordingly, the need to go through the expense of gathering, organizing and summarizing evidence and collecting signatures is not apparent until then.
6. When considering how to respond to a final rejection, what factor(s) cause you to favor the filing of an RCE?
If the Examiner articulates a fair (if unintended) interpretation of the claim language and/or the cited documents and the only way to get an amendment entered that would eliminate the fairness of the unintended interpretation is to file an RCE, I file 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)?
If the Examiner articulates a fair (if unintended) interpretation of the claim language and it is necessary to file an amendment that would eliminate the fairness of the unintended interpretation, I file the amendment after final.
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?
No. If its necessary to file and RCE, it is necessary to file an RCE.
10. What strategy/strategies do you employ to avoid RCEs?
I try to draft claims that are allowable and I pray for a reasonable Examiner.
11. Do you have other reasons for filing an RCE that you would like to share?
Getting newly discovered documents (usually cited by a foreign office) considered. Couldn’t the Office make itself aware of art cited by other Offices without requiring the applicant to file IDSs?
Ah yes, examiners are doing the work that Americans just won’t do, right? They don’t deserve any slack on this issue, and none should be needed. It is supposed to be the USPTO, not the VPTO. Anyways, kudos to Just saying for pointing out this language barrier that really should not exist. Hopefully the next regime will begin to correct this problem.
Ha! The etymology. Indeed. I must look that up.
Many thanks Leo for the amusement.
I understand you, Max. I mostly just wanted a chance to say “poppycock.” It’s one of those words with a great etymology.
I call it as I see it Leo. EPO-PSA is (erroneously) perceived as tainted by hindsight, by most everybody outside EPO circles. As a result of this (misconceived) perception, D1 is seen as useless as a basis for patentability objection because it will be so easy for Applicant’s attorney to rubbish the objection. So it is not even run.
Trained? How does one train a rookie Examiner? Easy in the EPO, because of the inflexibility of EPO-PSA. Hard at the USPTO because of the flexibility you mention.
LOL – and MM accused me of being an examiner apologist in a recent thread (incorrectly, of course).
According to IANAE, it appears never to be the fault of the examiner.
And how does that help?
Because you’re talking to the person, and you can ask questions and figure out why the two of you can’t seem to understand each other in writing. Then, at least you can file a more meaningful response that might convince the examiner. If you think the only meaningful phone interviews are ones that produce Notices of Allowance, you’re doing it wrong.
They always need to do another search.
Yes, if you’re amending the claims they need to do another search. Nothing wrong with that. That’s why they have rules about making actions final, and it’s why we file RCEs. If it took you until after final to make the amendment that produces allowable claims, the examiner deserves the RCE counts for putting up with you.
I’ll invariably get suggestions for amendments to overcome the prior art. However, when I include those amendments, I’ll get another rejection based upon different 102 art or perhaps an additional reference in a 103 rejection.
Yes, sometimes that will happen. See, when you amend a new feature into the claims, the examiner has to search again. Sometimes he finds it, sometimes he doesn’t. Incidentally, that’s also why you never get allowances over the phone. Had you drafted that feature into a dependent claim to begin with, it would have gotten searched the first time around.
If I think that the Examiner’s rejection is off base to begin with, why am I going to bother discussing it with the Examiner when the Examiner is only going to suggest an (unnecessary) amendment?
If you think his rejection is off base, and he thinks your argument is off base, your problem is communication. Specifically, you’re not doing any of it. Think of your client. If you keep pressing the same argument because the examiner is “off base”, and he keeps not being convinced because you don’t understand his rejection, what happens to the patent application?
many examiners are basically unintelligible because their oral (and oftentimes written) English is so bad.
Cut them some slack, it’s not their first language.
That’s my strategy … almost.
The only time I file RCEs is to tighten up claim language. However, I rarely have to do this.
“And that the examiner is usually no farther than a phone call away.”
And how does that help? I’ve been doing interviews on and off for well over a decade now, and the only worthwhile interviews I do are Examiner-initiated. Very few examiners are going to agree to allow anything over the phone (or in person). They always need to do another search.
I’ll invariably get suggestions for amendments to overcome the prior art. However, when I include those amendments, I’ll get another rejection based upon different 102 art or perhaps an additional reference in a 103 rejection. If I think that the Examiner’s rejection is off base to begin with, why am I going to bother discussing it with the Examiner when the Examiner is only going to suggest an (unnecessary) amendment?
Oh … and I’m not even going to address the issue that many examiners are basically unintelligible because their oral (and oftentimes written) English is so bad.
Sorry Random – I missed the double negative in your statement.
Mea Culpa.
“We were also taught that you could not possibly get in trouble for not allowing a case–that still seems to be true.”
While the pendulum may have swung back, you obviously left the office prior to the secret second set of eyes program only looking at allowances and not rejections.
I say “secret” because that is exactly what it is – a star chamber program. The office does not ever indicate in the written record how or why or on what actual grounds its selective second set of eyes is put on. I have heard directly from examiners (and even examiners on this board have referred to the “de facto” policy) as having a direct impact on their examination (and more correctly on their allowance) practice.
The biggest and most immediate impact Kappos had was his directive of “Quality does not equal Reject.” That single statement was the most critical culture changing event of his tenure.
Poppycock, Max.
Whoever taught Random that EPO searches are worthless was simply mistaken – I suspect that Random knows quite better now that he has escaped the PTO.
I’ve worked many dozens of cases that were prosecuted simultaneously in the EPO and the USPTO, and have often been mystified at the PTO’s willful ignoring of the best art, placed right in front of them courtesy of the IDS citing the EPO search results.
I’ve said this before as well – beyond some terminology and some formalism in the EPO-PSA approach, there simply isn’t that much difference between US-style and EPO-style obviousness. Because the US approach is a bit more flexible, it should be easier to put together a proper rejection in the US, but the examining corps appears to be very poorly trained.
Thanks Random. EPO search cites worthless? D1 useless? Quite probably. After all, the EPO Problem and Solution Approach to obviousness is what fixes D1 and, at the USPTO, arguing non-obviousness EPO-style brings no progress whatsoever.
For the uninitiated, EPO-PSA is incomprehensible and an object of disparagement. Compare learning how to ride a bike. You can laboriously and at great length explain to a person how to ride a bike (pedal cycle) but experience tells us that, until they practice it themselves they just don’t get it. Instead, they promptly fall off. Once an individual masters it though, they i)wonder how they ever had a problem with it, and ii) recommend biking to others.
No chance of progress, in any PTO told what to do by a supervisory judicial instance. Judges don’t ride bikes. Only the EPO is free from such supervision.
The vast majority of my cases originate in the EPO and then filed USPTO– but it’s quite rare when D1 is used in any of the US rejections!
Back when I was a US Examiner (about 100 years ago), we were taught in my art unit that EPO searches were worthless–I wonder if that is still the prevailing thought at the USPTO. We were also taught that you could not possibly get in trouble for not allowing a case–that still seems to be true.
Paul, not “fair” to whom? And even if it is not fair, it is nevertheless legitimate isn’t it?
On claim broadening, that kicks in at the EPO only after issue, Art 123(3) EPC. But you know that, don’t you. Pre-issue, it is only the prohibition on adding matter that you have to contend with. That and Rule 137 EPC which allows an Applicant just one chance to amend, after the FAOM. After that, you can’t amend any more without the “consent” of the 3-member Examining Division.
The severity of the amendment regime is tempered by pragmatic claim construction in infringement proceedings. See the Protocol to Art 69 EPC. After all, those proceedings are running in a court somewhere in mainland Europe, where English is a foreign language. It’s the substance that counts (rather than lawyer games played with nuances of the English language).
Which is much the point I’m futilely trying to explain to anon in the cat thread. Why bother with a more detailed rejection when the claims need to be amended so drastically that those details will inevitably be moot?”
No wonder its futile – you missed the focus of compact prosecution.
Re the above discussion of EPO vs USPTO prosecution:
Besides the EPO restriction on claim broadening, it is also not fair to compare them in view of the very much higher EPO search and examination fees, higher and tax-exempt examiner salaries, language hiring tests, etc.
I am forced to file RCEs in most cases.
Prior art is the problem. I need to add limitations.
That forces the RCE.
I do not think the PTO should stop prosecution when this happens.
The MPEP clearly instructs the examiners not to take this approach to search and examination.
Well, yes, but I’ve seen claims that were more than bad enough to warrant a departure from that instruction. I don’t complain, I cheerfully amend them to claim the actual invention.
I put a lot of thought into my dependent claims (I very rarely file more than the 20/3 that comes with the filing fee) and mostly only include those that I think give me a really good argument for patentability.
Same. And more than once I’ve incorporated a rejected dependent claim into claim 1 and argued its allowability over the cited art.
Yes, I’ve seen bad rejections. Yes, I’ve had examiners tell me that they rejected because their SPE told them to reject. But all of these problems can be exacerbated by bad, lazy drafting. If PTO examination is a negotiation, we would do well to remember that it takes two parties to negotiate. And that the examiner is usually no farther than a phone call away.
“This is especially true when the claims are so clearly anticipated that the examiner doesn’t need to find the closest D1 reference to make out a good rejection.”
The MPEP clearly instructs the examiners not to take this approach to search and examination. See MPEP 707.07(g).
“You’d think the applicant would anticipate amendments that could reasonably be expected to be made, and draft them into dependent claims to ensure they’ll be searched, but most don’t do a very good job of it.”
I put a lot of thought into my dependent claims (I very rarely file more than the 20/3 that comes with the filing fee) and mostly only include those that I think give me a really good argument for patentability. In other words, I don’t include claim 19 that recites: wherein the widget is red (unless that’s novel and non-obvious, of course!). What I usually get from the examiner as an “examination” of my dependent claims is a taking of official notice that the features recited in those dependent claims would have been inherently obvious as a matter of routine experimentation and design choice optimization, and if they’re not shown/suggested/even hinted at by the reference, they’re “well known” and as they are “non-critical” because it’s not disclosed that they solve any particular problem or provide any benefit or advantage, they would have been obvious. (Because as we all know the most obvious thing for PHOSITA to do is to add features that don’t solve any stated problem or provide any benefit or advantage.) In other words, lazy, bullsh!t, shortcuts from the examiner. Rather than follow the directive of MPEP 707.07(d) and indicate or identify any allowable subject matter in the application, examiners, particularly junior examiners, know that lazy, bullsh!t rejections of dependent claims get signed by SPE’s no questions asked. Counts in the bag. Indicating a dependent claim to be allowable, however, requires effort to explain to a SPE, and obtain approval to indicate allowable. You’ve heard about the path of least resistance?
I’m sure we agree on lots of things. Do you like long walks on beaches? How about J. Crew sweaters?
“In practice, the “endless process of probing and haggling” results from poor searches and the resulting weak rejections that the Office ultimately won’t stand behind (as evidenced by the large number of cases where there are multiple non-final actions, withdrawn final actions, withdrawn actions after appeal, etc.).”
We agree on something.
OK. I’m hard-pressed to come up with anything more. But here are two further thoughts:
1. An EPO examiner has no existence independent of the 3-member “Examining Division” to which he/she belongs. Poor work product burdens the other two members with unnecessary work. So perhaps Teamgeist/Esprit de Corps/Collegialitaet is somehow lacking at the USPTO.
2. EPO has a superior technology classification search tool?
The US examiner is supposed to conduct the search on the basis of the claimed invention, in light of the specification.
Max’s point, with which I’m inclined to agree, is that once a first rejection is made, it’s often impractical for an examiner to anticipate the full scope of amendments that can reasonably be expected to be made. This is especially true when the claims are so clearly anticipated that the examiner doesn’t need to find the closest D1 reference to make out a good rejection.
Also, when the claims are that broad, the applicant might take them in just about any direction. You’d think the applicant would anticipate amendments that could reasonably be expected to be made, and draft them into dependent claims to ensure they’ll be searched, but most don’t do a very good job of it. So the examiner rightly sends back a rejection that, if you know how to read it, says that your claims are so defective that there’s no point addressing them in any detail until they’re radically reconstructed.
Which is much the point I’m futilely trying to explain to anon in the cat thread. Why bother with a more detailed rejection when the claims need to be amended so drastically that those details will inevitably be moot?
And it’s all the applicant’s fault for filing a claim that’s nowhere near patentable, most of the time. Which is why the second action is final. Should have filed better claims. Not the examiner’s fault that you wasted your first go.
That’s fine, Max, and I understand your use of the word “disclosure”. It is certainly clear that the US rules are far more liberal than the EPO’s with respect to continuations and divisionals. But I still don’t see how that has much to do with the initial search.
The US examiner is supposed to conduct the search on the basis of the claimed invention, in light of the specification. He/she is also supposed to anticipate amendments that can reasonably be expected to be made, in view of the specification. (MPEP 900.) That doesn’t sound much different than what the EPO examiner is supposed to do.
Now, it is true that amendments after a first action may sometimes require a second search. But in this case, the Office is permitted to make the subsequent office action final. If the Office does that search properly, you’re done, unless and until the applicant pays for another search/examination.
Thus, if search/examination is done reasonably well, there is no “endless process of probing and haggling” (unless you consider two rounds to be “endless process”), except to the extent that the applicant is willing to pay an endless stream of new search/examination fees. Hence my observation that improvements in search/examination should lead to more RCEs, more abandonments, and fewer appeals, none of which is the case.
In practice, the “endless process of probing and haggling” results from poor searches and the resulting weak rejections that the Office ultimately won’t stand behind (as evidenced by the large number of cases where there are multiple non-final actions, withdrawn final actions, withdrawn actions after appeal, etc.).
So, when you say that “In the USPTO, one is looking for an opening bid in an endless process of probing and haggling,” I can unequivocally say that I’m not that “one.” If that “one” is the examiner, then he’s not doing his job properly.
“you can’t change the as filed disclosure”
Hey, we have that in common. How nice.
OK, I’ll try again.
In the EPO, on search, one is looking for D1, the prior art starting point for an EPO-PSA obviousness enquiry into the patentability of the contribution to the art that is revealed by the disclosure in the app as filed. In the EPO, Examiners know you search once and once only.
In the USPTO, one is looking for an opening bid in an endless process of probing and haggling. So why bother to agonise over how “close” D1 is?
Note my use of the word “disclosure” in the EPO para above. While, in an endless cascade of continuing applications, you can re-work the claims ad infinitum, you can’t change the as filed disclosure. So, in the EPO, you search that.
How’s that?
Yes, IANAE, at the EPO it is (more or less) as you say. So, I agree, there is no mystery how it is that EPO Examiners can and USPTO Exrs can’t. It’s a necessary attribute of any patent system that’s a “First to File” system.
I don’t see what “First to File” has to do with the inability of the USPTO to find relevant art and make it stick. IANAE’s comment about continuations is irrelevant – those are new cases and new searches. Endless chains of continuations aren’t happening because of liberal amendment rules. Likewise, the fact that a continuation might later be filed has no bearing on the search that needs to be performed on the originally filed claims.
The PTO has pretty decent rules regarding making rejections final and limiting after-final amendments. If the PTO were doing searches and examinations properly on a consistent basis, you would see more RCEs, more abandonments, and fewer appeals. I don’t think that any of those are happening. So what’s up with that?
Given how far the Fed. Cir. lowered the requirement for a prima facie case of lack of written description in Hyatt v. Dudas, 492 F.3d 1365, it’s a wonder 112, 1st isn’t more effectively used by the PTO. I vaguely remember something about Mr. Kappos wanting it to be applied more vigorously.
I guess I should clarify my original post in that I was talking about the US examiners’ inability to find D1 against even the originally filed claims. I’ve prosecuted many cases where the original US and EP claims are substantially similar and the ESR arrives with D1, and it is close. A year, two, whatever later, the first US OA arrives and the art is laughable. That has nothing to do with the differences in the two systems. That is just bad searching.
Yes, IANAE, at the EPO it is (more or less) as you say. So, I agree, there is no mystery how it is that EPO Examiners can and USPTO Exrs can’t. It’s a necessary attribute of any patent system that’s a “First to File” system.
But what about the US “written description” requirement, missing in the EPC. I understand that it is perfectly capable of performing at the USPTO the role that Art 123(2) EPC (no new matter) does at the EPO. If, currently, it doesn’t, why is that?
If I here labouring under yet another misapprehension, would somebody care to straighten me out?
Did I say that I didn’t want them?
Separating out your snark from any actual comment that you intend to have real meaning is very difficult, plainly because the latter is seen oh so seldom.
Perhaps you have some actual suggestions for making things better…?
I gave you two of my best ones already. You don’t seem to want them.
Maybe you should be less pedantic towards my suggestions. Perhaps you have some actual suggestions for making things better…?
(and don’t forget – these are suggestions for examining under the law – sure, you can make suggestions that change the law, but let’s focus on what the Office actually has control over, huh?)
Why US examiners can’t is not a mystery.
No, it’s not a mystery at all. US applicants can amend the claims more or less however they want at any time, and “supported by the specification as originally filed” is a relatively flexible constraint. I’ve seen patents with only a few pages of spec that were still spawning continuations when they expired, and that’s way more claims than any reasonable examiner can “search” based on only a spec and his imagination.
In Europe, the claims can only be narrowed, only based on what is literally recited in the specification, and in theory only once. What’s more, if a bunch of features are described together or as having comparable significance, you can’t easily split them up or permute them. If features are described in separate embodiments, you can’t easily combine them.
D1 teaches the bulk of claim 1, and anything you add by amendment typically either results in allowance or adds a secondary reference to the rejection. Yes, life is easier and more predictable in Europe. But that’s not the system you want if you’re an applicant looking to turn words into money.
EPO examiners somehow manage to find D1 pretty much in every case, and stick with D1 throughout. Why US examiners can’t is not a mystery. They don’t know how to do a proper search, as they’ve never been trained to do one, and they have no incentive to do a proper search.
Maybe the US needs some version of the summons to oral proceedings they have at the EPO. If the examiner is convinced he/she has the best art, and the applicant fails to define over it in one, or two, responses, require the applicant to make one final argument and/or amendment, and if that’s not successful, require an appeal.
Here is a good suggestion as any…
Nah, you’re not thinking big enough. Not looking to where the logic clearly points.
Omnibus claims. One apparatus, one method. One search of the entire spec. No rejections, no RCEs, no continuations, no backlog.
Better yet, have APJ’s assigned to spend a week or two each quarter or every other quarter to a TC and have them sit in on the pre-appeal and appeal conferences. So when the examiner, his/her SPE, and the know nothing, do nothing, beyond useless QAS (Quality Assurance Specialist, lulzamillion on that job title) all conclude, “Yeah, this is a winner, let’s send it up!” the APJ can, hopefully, bring a dose of reality to the process.
you get new examining time for continuations.
Maybe you shouldn’t. A continuation is based on the same spec, which means that according to anon it should require the exact same search, which should have been done already in the parent. After all, if I can present a claim in a continuation, I can present the same claim in the first nonprovisional filing.
“search every combination of features the applicant might possibly ever claim”
This might be the funniest thing I have ever read on this blog. Is that even possible in a month of review. Have you read a specification in a while, in the chem/bio tech world there are applications with millions of possible combinations.
Thats equivalent to saying, limit the case to a Zero amendments. Then its reject with best art and argue/appeal. Now you want serious compact prosecution, thats it.
Either way, its not going to work to achieve a fair prosecution.
Here is a good suggestion as any…
No amendments allowed, get rid of restriction/species practice, application includes 10 best claims, comprehensive review and then appeal or allow a claim.
you get new examining time for continuations.
Just read the application, UNDERSTAND IT, and then find the closest art. This is the breakdown. THat’s why the first action interview program is valuable.
That jumped out at me too. I count one round, and as you say, that’s often based on a bad search.
If you try to “negotiate” after final by filing an amendment, it always just sits until the RCE.
If anything, what needs to be adjusted is when the Office action is final. You should be able to amend a second time and have that entered and considered before having to file an RCE with a third amendment/argument.
It does provide a good break point, but it should be shifted back by one response if you really want to provide efficient examination.
Let applicants participate in pre-appeal and appeal conferences. Simple fix.
Examiners don’t read the comments submitted in response to Federal Register notices.
Don’t file RCE’s. Appeal everything.
Maybe change the pre-appeal conference idea into an “RCE review” idea–so when an Applicant files an RCE, there is a review of the outstanding rejections by a panel that includes somebody who is NOT the examiner or their immediate supervisor. Then if the rejections are found to not be proper, have the examiner issue a new action promptly. “Properly” rejected cases could stay at the end of the line like all RCEs do now.
BTW, good luck to the PTO on getting non-anonymous comments on RCE filing strategies. Anything you say can and will be used against you by the next examiner to pick up one of your cases.
The fact that no new matter can be added means the application as filed is as complete an input as the applicant will ever have.
And that’s today’s Top Tip for examiners. In the ten hours or so that you’re allocated for the initial search and examination, search every combination of features the applicant might possibly ever claim in his next seven continuations. Not just a quick keyword search, either. We all know those don’t (or shouldn’t) count.
At that point, the examiner should be able to list every allowable permutation of claim features, divided into groups corresponding to distinct inventions, and the applicant can elect one and get a Notice of Allowance with examiner’s amendment. Talk about compact prosecution!
Come on, examiners. Man up. (Person up?) Anything less is a shortcut, and your refusal to acknowledge your collective failing is only getting in the way of true discourse.
can (or perhaps the better question is ‘should”) that round actually count as a formal round?
If it’s a bad rejection, and you can explain why, it doesn’t count as a formal round. Everybody who prosecutes patents knows that.
(in cases where the applicant tried to move things forward with an amendment, the second round is often a cut/paste and “gone final because of amendment”),
The examiner can’t make an action final “because of amendment” if he presents the same rejection. What’s actually happening is that your amendment didn’t address his rejection, and you’re getting a final for “not persuasive”. I’m sure you get a lot of those.
Have you tried picking up the phone and talking to the examiner when you get a rejection you think is so ridiculous it shouldn’t even count? Because that’s my answer to question number 4.
And I would add that my comment immediately after the Exelixis case is being echoed here – all of a sudden the idea of moving the RCE deck chair to the back of the line loses a lot of its appeal [pun intended] and (gasp) actually examining that application (once again) becomes important.
You want to end the moving around of deck chairs? Do a solid examination in the first place (as I have always said).
While there may be a (very) small number of applicants who never give up, a solid examination dramatically cuts out (or at least minimizes) ALL future examination work, no matter how many times an RCE is filed, no matter how many appeals are sought. The fact that no new matter can be added means the application as filed is as complete an input as the applicant will ever have. It is the attempts to shortcut that solid examination that are squarely to blame for the mess the office faces. The adage fits: If you don’t have time to do the job right the first time, when will you find the time to do the job right?
Once contributing factor to this problem is the ‘widget’ mentality of looking at all applications as deserving the same allotment of widget-processing time.
A suggestion I have given before: create an expert panel to screen the incoming applications and assign a scaled view of complexity and allotted examination time based on the merits of the individual application. The so-called scourge of crrp bad patent (applications) are often the easiest to dispatch (even hire MM and his ability to sniff out bad patents in five minutes).
“after at least two formal rounds of rejection”
The “formality” of those rounds needs to be examined in closer detail.
When the first round is often a keyword search based on claim terms without any understanding (and in some cases a clear lack of actually reading the specification), can (or perhaps the better question is ‘should”) that round actually count as a formal round?
When the second round is often a first real examination, but rather truncated (in cases where the applicant tried to move things forward with an amendment, the second round is often a cut/paste and “gone final because of amendment”), then that round is also suspect as to a true round of negotiation.
As to james’ “new rules to now limit the # of RCEs filed” been there done that – see Tafas. To say that Kappos merely withdrew the rules is to ignore a rich story of much greater import (that the rules were fatally flawed has been explained by the likes of David and Ron – thanks guys!). And by the way, the fact that the Tafas case did not receive vacatur does mean that the Office cannot – under law – try that move again.
All that being said, I congratulate the Office for putting the spotlight on examination, where it should have been all along.
The PTO will do anything to try to avoid putting the time in required for examining patent applications whether it be reducing the counts to examiners, charging more fees to the applicant, limiting the # of applications filed or devising new rules to now limit the # of RCEs filed. Time would be better spent on continuing some past effects at enhancing examiner satisfaction and hiring more examiners. It takes money but is worth it in the long run. There are now quick fixes.
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