Guest Post by Prof. Sean Tu: Uneven Distribution in the RCE Backlog

Dr. Tu is an Associate Professor of Law at the West Virginia University College of Law and a shareholder in Patent Advisor. His research focuses on the patent examination system. – Jason

Previous posts (http://www.patentlyo.com/patent/2012/11/guest-post-the-rce-cliff.html and http://www.patentlyo.com/patent/2012/11/patent-stats-for-fy-2012.html) have reviewed the increase in RCE filings with a concurrent increase in the RCE backlog.  On average, there is a 5.9 month pendency from RCE filing to the next Office Action.  However, this number may be deceptive since it is an average across all art units.  Anecdotally, some art units experience much longer pendency periods.

To determine which art units experience the longest / shortest RCE response time, we turned to the Reed Tech Patent Advisor™ information system (www.patentadvisor.com).  This online information system includes patent office statistics derived from a collection of file histories encompassing most every published application since 2002.  Our method was to count every RCE with no corresponding next significant action (i.e., with no corresponding next Office Action, Notice of Allowance or Notice of Abandonment).  We then segmented the data by art unit.  Thus, for each art unit, we determined the number of RCEs pending response as of December 31, 2012.

The figure below displays the results of our analysis. Each pie piece represents a specific technology center.  Within each pie piece are circles that represent individual art units within the technology center. The top number in each circle identifies the art unit, while the bottom number represents the art unit’s count of RCEs pending as of December 31, 2012.  The individual art unit circles are also color coded to help visualize the relative significance of the backlog within each tech center.  Dark blue represents a large backlog, while light green represents a shorter backlog.  Additionally, the size of each circle is directly proportional to the size of the art unit’s RCE backlog. 

Figure 1

Accordingly, one can clearly see a greater number of RCEs present in technology center 1600 (Biotechnology and Organic Chemistry) when compared to technology center 2800 (Semiconductors, Electrical and Optical Systems and Components).  This may be unsurprising since biotechnology applications may require significantly more review time, or specialized knowledge compared to electrical applications.  Similarly, one can see that certain art units have a greater backlog, even within the same technology center.  For example, 2617 (Cellular Telephony) and 2629 (Display Systems) have a much greater backlog when compared to other art units within technology center 2600 (Communications).  Again, this may be unsurprising since many more applications are filed dealing with cellular telephone technology (4,757 pending applications in art unit 2617) compared to fax technology (903 pending applications in art unit 2627). Accordingly, examiners in fax technology may be more willing and/or able to pick up more RCEs from their special docket compared to those examiners in cellular telephone technology.  Mitigating this issue, may be a higher number of examiners in art units with a higher number of pending applications.  As discussed below, we did not calculate the number of active examiners present in each art unit.

In the center of the figure is a bar graph that shows the overall number of RCEs in the entire patent office that are awaiting examination broken down by year.  This figure shows that there is a significant number of RCEs filed in 2012 that are still awaiting examination.  This number is unsurprising since RCEs should be taken in turn, and there is a selection bias against later filed RCEs.  Accordingly, one would expect the number of RCEs in 2012 to be greater in number since they will be taken up by the examiner later than an RCE that was filed in 2010.

There are two key limitations with this dataset.  First, we have intentionally excluded data regarding average response time for responding to an RCE for each art unit.  This is because the RCE pendency data is skewed because we do not count an RCE until it has been acted on.  Thus, all of the unexamined RCEs could not counted when calculating an average response time.  Accordingly, the average response time would be misleading.  Second, we did not determine the number of active examiners in each art unit.  Thus, although the backlog may look high in absolute numbers, the response time may be reasonable simply because it is spread over a large number of active examiners.

The RCE backlog cannot be solved simply by adding new examiners.  This is due to the count system which gives incentives for examiners to pick up new cases rather than take up an old RCE.  Additionally, new examiners cannot help pick up RCEs that are already on another examiner’s “special new” docket. These data suggest that the PTO should address art unit-specific pendency data when thinking of solutions to the RCE-backlog problem.  Specifically, the PTO may consider requiring examiners from specific art units to pick up more than one item per month from his/her “special new” docket.  Alternatively, the PTO may consider readjusting the count system to incentivize examiners to pick up RCEs.  Finally, the PTO may consider placing RCEs back on the “amended” docket instead of the “special new” docket, which would require examiners to act on an RCE within two month of its appearance on the examiner’s docket.

These data suggest that practitioners should use this type of art unit-specific pendency data provided by services such as Reed Tech Patent Advisor™ when counseling their clients.  This online service enables its users to easily access a comprehensive break down of the RCE docket for each individual examiner and each individual art unit.  Understanding the possible consequences of filing an RCE should help clients make rational decisions about: (1) challenging the propriety of a “final” designation in an office action, (2) filing a continuation application instead of an RCE (Both RCEs and CONs are placed on the examiner’s “special new” docket, but RCEs can be given less counts.  However, PTA considerations may justify filing an RCE instead of a CON),  (3) making amendments to the claims prior to issuance of a first office action, and (4) drafting the strongest first response as practical, which may include adding dependent claims and/or conducting interviews before issuance of a final office action.  Each of these actions may be more costly for clients in the short run, but save months if not years of time in the long run.

Download a PDF of the above chart here: Download 130324 Poster Graphic Only

28 thoughts on “Guest Post by Prof. Sean Tu: Uneven Distribution in the RCE Backlog

  1. I disagree. A reference that discloses vodka+gin is going to necessarily disclose the individual components and therefore anticipate the amended claim.

    If, however, your interpretation is correct, the examiner would be quite justified in refusing to enter the amendment after final, considering that a reference that meets the amended claim would not necessarily have met the original claim–in that case the amendment neither narrows nor broadens the claim, but instead claims something entirely different.

  2. Let’s say there were prior art that disclosed a mixture of vodka and gin. The prior art anticipates the original claim, but I would say that it does not anticipate the amended claim because vodka + gin is not one of the items in the Markush group recited in the amended claim.

    I think that amended claim is in fact narrower than the original claim. The amended claim avoids the prior art by its narrowing amendment.

  3. I don’t see where in your example you’re *changing* “comprising” to “selected from the group consisting of”. Of course if you use “selected from the group consisting of” in addition to “comprising”, you further limit the claim, but that’s not what bierbelly said.

    It’s easy to come up with an example where changing from comprising to selected from the group consisting of broadens the claim. Say you come up with a new wonder drug to reduce stress levels after reading infuriating comments on blogs:

    Original claim: An alcoholic drink comprising vodka, gin, tequila, and rum.

    Amended claim: An alcoholic drink selected from the group consisting of vodka, gin, tequila, and rum.

  4. “I don’t think you understand the realities of examining.”

    I understand it quite well.

    “I can’t cherry pick much…”

    The key word in that sentence being, of course, “much.” I’m in favor of whatever measures the PTO cares to implement to reduce cherry picking of regular new and special new cases.

  5. I bet these RCE statistics are skewed by RCE’s which are filed merely to enter an IDS. That is the only time I get mine acted on within a month. The other times I have to wait average of 6 months to a year for a reply. I get prompter replies when I file an appeal brief.

  6. Everyone praised Kappos for bring down the FOAM pendency, but in really all that happened was the cases were shuffled from the new stack to the RCE stack.

    There were some of us who duly noted the deck chairs of the Titanic were merely being moved about.

    On the plus side, the lower counts stopped the RCE churn abuse.

  7. “Prosecution, is C L O S E D.”

    And, I should add, that prosecution was very compact. I have like 0 2nd action non-finals and 0 appeals for the last year or two.

  8. “Did you sit down and think out what the best strategy is when they implemented the new count system where you’re loosing up to a full count per BD by working on RCEs?”

    I actually did do that, but everything actually happened naturally without any considerable scheming or anything of that nature on my part.

    “It will be different for everyone, but for me the best strategy was to sit on RCEs and work mostly on new cases when I considered/balanced the #of hours required, #of hours given to work on the case, production requirement, workflow bonus, and desired # of hours per biweek I wanted to work.”

    Yeah it probably is best for me, but I don’t know I have to do a restriction for like every new case, which is a pain in my arsehole because doing restrictions proper like (especially species) is a tremendous pain compared to the measely 1 hr we’re supposed to take (only if we actually send the paper restriction of course lol). I mean, just to be clear, even with my improved abilities to understand and read applications it still takes time to work through finding where all species are shown and which parts are truly mutually exclusive etc.

    “It incentivizes new cases over RCEs.”

    Yeah it does. But my allowance rate is so high lately that I get rather few RCE’s and the ones I do get are pretty ready to go.

  9. Say we have two claims:

    Claim 1. A composition comprising A, B, and C.

    Claim 2. A composition comprising A, B, and C, wherein all of the component(s) “C” is(are) selected from the group consisting of Ca, Cb, and Cc.

    Prior art discloses a composition comprising A, B, Ca, and Cd.

    Claim 1 is open to further components, such as Cd. However, Claim 2 is closed off to further “C” components beyond Ca, Cb, and Cc. The prior art thus anticipates Claim 1, but not Claim 2. So, an applicant could amend to recite “selected from the group consisting of” to avoid an anticipation rejection based on this prior art.

    Can you think of an example where changing from “comprising” to “selected from the group consisting of” would broaden the claim?

  10. Did you sit down and think out what the best strategy is when they implemented the new count system where you’re loosing up to a full count per BD by working on RCEs?

    It will be different for everyone, but for me the best strategy was to sit on RCEs and work mostly on new cases when I considered/balanced the #of hours required, #of hours given to work on the case, production requirement, workflow bonus, and desired # of hours per biweek I wanted to work.

    It required running a number of scenarios, but I came to the same conclusion that Management (i.e. Kappos et al.) did when they came up with the new system. It incentivizes new cases over RCEs. Given the huge increase in RCE pendency I’m clearly not the only one that came to this conclusion.

  11. “Another idea I think which would decrease back-log is something like a request to re-open after-Final (RAF). For example for 60% the RCE fee the applicant can get new amendments or new decs entered after final and the examiner acts on the case in the amended docket (for PTA purposes a RAF would count as filing an RCE). The examiner could go Final after receiving the RAF.”

    I’m really hoping this is the suggestion of a newer examiner, hopefully someone in the training academy or someone just out of it, and not a seasoned examiner.

  12. “Reducing the number of new applications each examiner has to cherry pick their way through for FAOM counts will provide them an incentive to start looking at the “special new” (aka CON and RCE) dockets for counts.”

    I don’t think you understand the realities of examining. I can’t cherry pick much because of the workflow requirement of working on the oldest new case and then any of the next 4 oldest in order to get any workflow credit for PAP purposes (which is how we’re evaluated).

    You can thank Dir. Kappos for the increase in RCEs. Under the old count system I received the same number of counts for RCEs as for new cases. Now I’m losing counts for working on RCEs rather than new cases. The new count system was a net negative to all examiners in more difficult art with higher BD hours, and a net positive for easy arts where the 2.5 extra hours per BD that was given to us was worth more than the .25 and .50 counts being lost per case.

    Now under the new system I have a choice: (a) do the same mix of cases I was doing before the new count system but I’d have to do more work to make up for the lost counts from RCEs, or (b) let RCEs rot and focus on new cases where I still get the full counts.

    Everyone praised Kappos for bring down the FOAM pendency, but in really all that happened was the cases were shuffled from the new stack to the RCE stack.

    You want the RCE pendency to come down, it’s simple, give the .25 and .50 counts back for working on RCEs. Absent that there is little that can be done because production comes first at the PTO. Given a choice between a new case that gets 1.25 counts for the FOAM and a 2 year old RCE worth .75, the examiner is going to choose the new case because after two years sitting there the old RCE case would likely have to be re-read anyways.

    However, lowering the RCE pendency is likely going to bring the FOAM pendency back up. Hiring isn’t likely to make a significant impact if filings increase (excluding the big AIA bounce) given better economy, cost of living pay freeze, and unsuitability of the job to many new examiners that is increasing attrition rates. During the recession attrition went down to 4.17%/ year, but as the economy recovers expect pre-recession attrition rates of 9.2%/year. At those higher attrition rates it’s pretty difficult to hire your way out of the hole, especially given sequestration and the other budgetary shenanigans.

  13. Just to be clear bier, I get amendments that are all of one word many times, but in my art that one little word makes a world of difference. Indeed, I suggest that one little word many times for suggested amendments. But here’s the thing bier, unless I think that case is going to allowance your AF is not coming in. Prosecution, is C L O S E D. Unless I’m feeling especially generous or already know that my old art gets that new amendment too, in which case I allow the amendment in and maintain the rejection.

  14. “and yet they still refuse to direct the examiners to make a fair and thorough review of after final responses”

    I don’t know which AU’s you’re talking about because mine does.

    “nor direct them to enter relatively simple after final amendments”

    Doing that just needlessly complicates things usually. If it truly is an amendment that will simply simplify things then it will be entered.

    “In this latter regard, I recently got an advisory action refusing to enter an amendment changing the transitional phrase “comprising” to “selected from the group consisting of”, which change would have avoided the cited reference. Compact prosecution my @!#.”

    Why on earth do you think that should have been entered? Just to make you happy?

    I’m being serious here bier, why on earth do you think that should be entered?

  15. “Adding more examiners will reduce the new application docket of all the current examiners.”

    Lol wut? I’ve never heard of that happening. Maybe in like 5 years from now with super strong hiring that could happen.

  16. “Another idea I think which would decrease back-log is something like a request to re-open after-Final (RAF). For example for 60% the RCE fee the applicant can get new amendments or new decs entered after final and the examiner acts on the case in the amended docket (for PTA purposes a RAF would count as filing an RCE). The examiner could go Final after receiving the RAF.”

    Why on earth would examiners (via popa) agree to this? Are they getting a full 1 count for the RAF?

    I don’t know bro, it’s just tinkering with the system in an arbitrary fashion it seems to me, it’s like you’re buying 1/2 of an RCE (where you get a full 2 additional amendments).

  17. “On average, there is a 5.9 month pendency from RCE filing to the next Office Action. ”

    Jebus, mine are done in a couple of weeks to a month lately.

  18. It’s clear how changing “comprising” to “consisting” could overcome prior art, but it’s not clear to me how changing “comprising” to “selected from the group consisting of” would have that effect. If anything, it’s broadening, because “comprising” would require all of the components that follow, while “selected from the group consisting of” would require just one. It would be interesting to know the context.

  19. It happens sometimes that a reference includes the positively recited features, but it also requires a further feature that is beyond those recited in the “group consisting of”. In that case, a claim reciting “comprising” may read on the prior art, but the claim reciting “consisting” would not because it excludes that further feature that is required by the art.

  20. I recently got an advisory action refusing to enter an amendment changing the transitional phrase “comprising” to “selected from the group consisting of”, which change would have avoided the cited reference.

    In what context does changing only the term “comprising” to “selected from the group consisting of” avoid a reference?

    I’m not saying it’s never narrowing but it’s not immediately apparent (to me) that such an amendment is necessarily narrowing. Maybe I need more coffee?

    In a context where it is narrowing (assuming one exists) it does like the kind of thing that could raise real written description issues, especially if the language isn’t already in a dependent claim or hadn’t previously been proposed by the Examiner.

  21. “The RCE backlog cannot be solved simply by adding new examiners.”

    With respect to the new application backlog, I recall attending a number of AIPLA, IPO, ABA, etc. meetings back in the 2004-2006 time frame where representatives from the PTO, including Dumass and Dr. Evil (aka John Doll), proclaimed, “We can’t hire our way out of the backlog.” They were wrong about that of course.

    Adding more examiners will reduce the new application docket of all the current examiners. Reducing the number of new applications each examiner has to cherry pick their way through for FAOM counts will provide them an incentive to start looking at the “special new” (aka CON and RCE) dockets for counts.

    Has hiring more APJ’s reduced the PTAB backlog?

  22. “Simplicity” of an amendment isn’t the issue, of course. Patentability is ultimately the issue. If the examiner thinks there is (different) prior art that would address your narrower claim, then he would deny entry of the AF amendment. How is that contrary to compact prosecution?

  23. ” filing a continuation application instead of an RCE (Both RCEs and CONs are placed on the examiner’s “special new” docket, but RCEs can be given less counts.”

    It is not the less counts that causes RCE’s to be done after CON. In the special new docket say there is an RCE that is 9 months old. A new CON comes in which is say 10 days old after processing. Both get put on the same docket. However, the CON gets put before the RCE in the order the Examiner has to finish the cases (unless said case was already selected as one of the examiners 3 starred cases). This is also true for DIV. CIP are placed in regular new.

    To fix the problem the CON cases and RCE should be examined in the order that they are received. Also the Office should let examiners do up to 5 cases from the special new docket per bi-week (up from 3) to count for their docket management score.

    Another idea I think which would decrease back-log is something like a request to re-open after-Final (RAF). For example for 60% the RCE fee the applicant can get new amendments or new decs entered after final and the examiner acts on the case in the amended docket (for PTA purposes a RAF would count as filing an RCE). The examiner could go Final after receiving the RAF.

  24. As I understood it, the PTO has intentionally delayed the processing of RCEs in order to disincentivize applicants from filing them…and yet they still refuse to direct the examiners to make a fair and thorough review of after final responses, nor direct them to enter relatively simple after final amendments. In this latter regard, I recently got an advisory action refusing to enter an amendment changing the transitional phrase “comprising” to “selected from the group consisting of”, which change would have avoided the cited reference. Compact prosecution my @!#.

    Until some teeth are actually inserted into after final practice on behalf of applicants, nothing will change.

  25. TC 2600 was recently restructured, and the graphic includes both the old AU numbers and the new ones.

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