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.