Change in USPTO Processing of RCEs Likely to Significantly Delay Prosecution

26 October 2009 Publication
Authors: Courtenay C. Brinckerhoff Stephen B. Maebius

Legal News Alert: Intellectual Property

On November 15, 2009, the USPTO will implement a critical revision to internal procedures that places newly filed requests for continued examination (RCEs) on an examiner’s “special new” docket instead of his/her “amended” docket. This change, coupled with vaunted overhauls to the USPTO’s count system (which is used to assess examiner productivity) that will give examiners less credit for examining RCEs, could result in significant prosecution delays after an RCE is filed.

Currently, with RCEs docketed on the “amended” docket, examiners must act on an RCE within two months of its appearance on the examiner’s docket. Thus, an RCE is treated like any other response and does not significantly delay prosecution. Further, under the current count system, examiners earn 1.0 count for the first office action in response to an RCE, while final and subsequent office actions do not earn any counts. Thus, the current count system incentivizes the prompt examination of RCEs because an examiner can earn more credit for an RCE than a final (or other subsequent) office action in another case on his/her amended docket.

Under the new docketing procedures, RCEs filed on or after Sunday, November 15, 2009 will be placed in queue on the examiner’s “special new” docket, which includes continuation and divisional applications as well as applications that have been accorded “special” status under 37 C.F.R. § 1.102. An examiner may be required to act on just one item per month from his/her “special new” docket.

Further, under the new count system, examiners still will earn 1.0 count for the first office action in response to an RCE. However, if a subsequent RCE is filed, examiners will earn just 0.75 counts for the first office action in that and any subsequent RCE. On the other hand, examiners will earn 1.25 counts for the first office action in a continuation or divisional application. Consequently, the new count system may discourage the prompt examination of RCEs, because an examiner will earn less credit for an RCE than a first office action in a continuation or divisional application on his/her “special new” docket.

Together, these changes are likely to significantly delay prosecution after an RCE is filed. Indeed, judging from the time to first action in continuation and divisional applications, RCEs filed on or after November 15, 2009 may not be acted on for many months, or even more than a year, from the filing of the RCE. The delay may be particularly long in art units that receive high proportions of RCEs, including chemical, biotechnological, and pharmaceutical fields as well as some computer fields.

Any significant prosecution delays after an RCE is filed could make patent term adjustment (PTA) even more critical. Under the statutory PTA provisions (35 U.S.C. § 154), the USPTO is charged with delay when it takes more than four months to respond to an applicant’s reply. Thus, under the new docketing and count systems, RCEs may accrue significant USPTO delay, which could translate into significant PTA, as long as the USPTO delay exceeds the applicant’s own prosecution delays. Of course, PTA may not fully compensate applicants for USPTO delays.

There are several steps that patent applicants can take now and moving forward in response to these changes.

First, patent applicants could review their portfolios for cases where they may want to file an RCE, and determine whether an RCE (including a response) could be filed before November 15, 2009. This might include applications where a final office action is pending and applicants are considering filing an information disclosure statement, claim amendments, or new evidence, or are considering requesting an interview with the examiner.

Second, patent applicants could scrutinize the propriety of a “final” designation in an office action and challenge finality where appropriate. For instance, office actions sometimes are made “final” on the premise that previous amendments necessitated new grounds for rejection, but the stated rejections may not be related to the amendments and/or the rejections could (and should) have been lodged previously. A successful challenge to finality would permit applicants to file additional claim amendments and/or evidence to address the new grounds without having to file an RCE.

Third, applicants could consider challenging an examiner’s refusal to enter claim amendments or consider new evidence presented after a final office action (“after final”). In some cases, for example, the amendments may place the application into condition for allowance, and an examiner persuaded of that possibility, perhaps through an interview, might agree to enter the amendments instead of insisting on an RCE. In other cases, new evidence probative of patentability may have become available only after issuance of the final office action, and so could be entitled to consideration after final on that basis, without the need for an RCE.

Fourth, applicants could consider requesting an interview after final, even though granting an interview after final is entirely within the discretion of the examiner. An interview may result in an agreement on critical aspects of examination such as proposed claim amendments for allowance, and thus eliminate the need to file an RCE.

Fifth, applicants could file a continuation application instead of an RCE, particularly in applications that do not appear to be close to allowance. Depending on the size of the application (page count and claim count), the USPTO fees for filing a continuation application may be similar to those for an RCE. While both a continuation and RCE would be docketed on the examiner’s “special new” docket, the examiner may be incentivized by the new count system to act more quickly on a continuation than an RCE. A continuation will be treated differently than an RCE under the PTA provisions, however, so if the pending application has accrued significant USPTO delay that outweighs any applicant delay, PTA considerations may warrant filing an RCE instead of a continuation, even though filing an RCE stops the accrual of USPTO delay for USPTO failure to issue a patent within three years, whereas the three-year clock starts over with the filing of a continuation application.

For newer applications, applicants could review their applications prior to issuance of a first office action to determine whether any preliminary claim amendments should be made, so that the first office action takes into account the claims the applicant intends to prosecute. For example, preliminary amendments may be warranted in order to conform the claims to U.S. patent practice, in order to focus the claims in view of prior art uncovered since the filing date, in view of current business goals or commercial considerations, or for any number of other reasons. If such amendments are not made until after issuance of the first office action, the office action that first addresses the merits of the desired claims could be a final office action, and an RCE may be required if the claims are not found to be allowable in the first instance.

Moving forward, applicants should revisit their approaches to non-final office actions, and endeavor to provide as strong a first response as practical. This may include adding dependent claims with fall-back claim amendment positions, submitting evidence in support of patentability, and conducting an interview, which an applicant may request as a matter of right before issuance of a final office action.

As always, applicants and their representatives should endeavor to develop good professional relationships with examiners based upon mutual respect and trust. Applicants and their representatives should continue to treat examiners with the utmost professional courtesy and respect, and understand the pressures examiners are under to meet individual performance goals while also reducing the heavy backlog of unexamined applications and maintaining patent quality. One of the stated objectives of the new RCE docketing procedures is to “allow examiners greater flexibility in managing their workload and allocating their time among requests for continued examination and new applications.” Establishing a strong professional relationship with an examiner developed over the course of prosecution will increase the likelihood that an examiner will trust the applicant’s and representatives’ requests to exercise his/her discretion when deciding whether to make an office action “final,” deciding whether to enter claim amendments or new evidence after final, deciding whether to grant an interview after final, and deciding when to take up an RCE for examination.  

The USPTO notice is available at www.uspto.gov/patents/law/notices/rce_docket.pdf.

Foley will continue to track any additional information distributed by the USPTO regarding the processing of RCEs.


Legal News Alert is part of our ongoing commitment to providing up-to-the-minute information about pressing concerns or industry issues affecting our clients and colleagues. If you have any questions about this alert or would like to discuss this topic further, please contact your Foley attorney or any of the following individuals: 

Courtenay C. Brinckerhoff
Vice Chair, Biotechnology & Pharmaceutical Practice
Washington, D.C.
202.295.4094
cbrinckerhoff@foley.com

Stephen B. Maebius
Chair, Intellectual Property Department
Washington, D.C.
202.672.5569
smaebius@foley.com

Steven M. Reid, Ph.D.
Chemical & Pharmaceutical Practice
Washington, D.C.
202.295.4767
sreid@foley.com

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