Guest post by Dr. Kate S. Gaudry of Kilpatrick, Townsend & Stockton LLP and Dr. Joseph J. Mallon of Knobbe, Martens, Olson & Bear LLP.
A recent PatentlyO posting noted that the growth in Request for Continued Examination (RCE) filings has leveled off. It appears that RCE filings have become less desirable, at least in part because the PTO is now responding to them much more slowly. Changes to the "count" system and RCE docketing implemented by the PTO in 2009 have resulted in significant increases in both the RCE backlog and the pendency from RCE filing to the next Office Action. The PTO dashboard shows a near doubling in two years, with the RCE backlog increasing from under 50,000 in October 2011 to over 95,000 in September 2012, and pendency from RCE filing to the next Office Action going from an average of 2.7 months in October 2011 to 5.9 months in September 2012 (see http://www.uspto.gov/dashboards/patents/kpis/kpiBacklogRCEDrilldown.kpixml and http://www.uspto.gov/dashboards/patents/kpis/kpiRCEtoOFCACTION.kpixml). The current 5.9 month pendency from RCE filing to the next Office Action may not seem particularly long to many. However, anecdotally, we are aware of an increasing number of cases in which the pendency is over two years, suggesting a significant increase in post-RCE-pendency variability as well.
To quantify and expand on our anecdotal observations about the increase in pendency, we turned to PatentCoreTM, which is a database that provides a variety of statistics derived from file histories of more than 6 million applications. PatentCoreTM provided us with a list of all utility applications in each of five art units (1618 – Organic compounds; 1644 – Drug, bio-affecting and body treating compositions; 2161 – Data processing: database and file management or data structures; 2822 – Semiconductor device manufacturing: process; and 3622 – Data processing: financial, business practice, management or cost/price determination) in which an RCE was filed between October 1, 2002 and October 1, 2012. For each of these applications, the following information was collected: the date of the RCE, the date of the next PTO action and the type of the next PTO action (Office Action, Notice of Allowance, or Notice of Abandonment). Next-action Notice of Abandonments were rare and seemed to follow unusual fact patterns, so we excluded these cases from our data set.
For each art unit, we asked the following question for each fiscal year (FY) between 2003 and 2012: what percentage of the applications having RCEs filed in the given FY received a next Action (i.e., an Office Action or Notice of Allowance) within 3 months, 6 months, 1 year, 2 years or 3 years from the RCE filing?1
The Figures accompanying this post show the results of our analysis. Each subplot corresponds to a different art unit. The x-data indicates the FY of RCE filings. The y-data (% Examined) indicates the percentage of the applications with RCE filings in the fiscal year that received a next Action within a given time period following the RCE filing. The color of the data symbols indicates the duration of that time period. Thus, the first red data point in the top graph indicates that, for applications in art unit 1618 for which an RCE was filed in fiscal year 2003, 64.6% of those applications received an Office Action or Notice of Allowance within 3 months from the RCE filing. Not surprisingly, for a given fiscal year the percentage examined increases as longer durations are considered.
Of note, however, is how dramatically the data changes across fiscal years. For example, averaging across the five art units, the percentage of applications examined within three months in FY 2012 was less than half (43.7%) the percentage of applications examined within three months in FY 2003. The trends are most striking in the business-method art unit (3622) and the chemistry art unit (1618). For example, in FY 2011, only 52% (art unit 3622) and 25% (art unit 1618) of RCE filings received a next Action within two years of the RCE filing.
Ideally, the PTO will address this type of art unit-specific pendency data in its approach to tackling the increasing RCE-backlog problem. In the meantime, practitioners should be prepared to adjust prosecution strategies in view of the trends. In instances in which fast patent procurement is desirable, several options exist to attempt to avoid potential long RCE backlogs. First, in view of this data, practitioners may wish to be more conscientious about how they respond to first Office Actions (e.g., entering amendments less cautiously).
Second, practitioners can use services such as PatentCoreTM to review art-unit- or examiner-specific data identifying RCE backlogs and determine whether appealing a rejection is a more desirable (and potentially faster) way to respond to a final rejection as opposed to filing an RCE. Third, practitioners can consider filing a continuation instead of an RCE. Finally, while expensive, the Track One prioritized examination initiative by the PTO provides an opportunity for examination of an application to be accelerated following an RCE filing.
1 For recent years, this query entailed identifying all applications for which sufficient time had passed since the RCE filing to answer the query. For example, if a set of applications had RCE filings in September 2012, it would be too soon to calculate what percentage of these applications received a next Action within 6 months from the RCE filings.