The suggestion I usually get is to reach out to the examiner and convince him/her that the application is allowable. (Although examiners are supposed to take up applications in turn, they are permitted to take an application out of turn if it is in condition for allowance.) But how do I do this? I already believe that the reply filed months ago makes the application allowable, if only the examiner would look at it!
The more concrete suggestion is to request an interview to explain how the application is allowable. This is frustrating, because often an interview was held just before the RCE was filed, and the RCE was required to obtain consideration of the claim amendments or experimental data discussed during the interview. Now I have to convince my client to authorize another interview to review the same information with the examiner, with the hope that the examiner will agree with our position at least enough to review the application out of turn.
Another problem with this suggestion is that if the examiner does agree to an interview, any follow-up replies are likely to be counted as a “supplemental” reply to the RCE submission. Under the Patent Term Adjustment (PTA) rules, an applicant is charged with “applicant delay” for the entire time from the filing of a response to the filing of a supplemental response. 37 CFR § 1.704(c)(8) provides this example of applicant delay:
Submission of a supplemental reply or other paper, other than a supplemental reply or other paper expressly requested by the examiner, after a reply has been filed, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date the initial reply was filed and ending on the date that the supplemental reply or other such paper was filed
(While the rule does have an exception for replies “expressly requested by the examiner,” I do not know how easy it is to establish a record demonstrating that a reply filed after an interview was “expressly requested by the examiner.”)
That would mean that instead of earning the PTA that began to accrue four months after the RCE was filed (under 37 CFR § 1.703(a)(2)), the application would be charged with a PTA deduction for the full time period from the RCE to the post-interview reply.
Still another problem with this suggestion is that there is no guarantee that the examiner will take up the application any time soon after the interview. I had one case where the examiner was kind enough to grant a post-RCE interview, but it still took 6 months after that to receive the next Office Action.
The other suggestion I received was to file a “status inquiry.” The ombudsman who suggested this approach indicated that it would show that the applicant wants to advance prosecution (I cringe at the implication that waiting for the application to be taken up in turn reflects any dilatory intention on the part of an applicant!) and would help the USPTO identify “outlier” applications that are experiencing unusual delays. This last point got my attention, because I know the USPTO is collecting data to identify “outliers” in many categories, and had taken action when it was determined that medical device applications were experiencing unusual post-RCE delays.
I was considering implementing a policy of filing status inquiries for all of my RCE “outlier” applications, especially for those cases where an examiner still “has no idea” when he/she will get to the application over 6 months after the RCE was filed. When I discussed this with my Legal Assistant, she warned me that the USPTO might treat a “status inquiry” as a “supplemental reply” under the PTA rules. That seemed unlikely, but I ultimately determined from the USPTO’s Office of Patent Legal Administration (OPLA) that my Legal Assistant was right to be concerned.
We were informed by OPLA that if we file a “status inquiry” because we are concerned about the USPTO’s delay in examining an application after an RCE has been filed, the USPTO will treat that as a “supplemental reply” that triggers a PTA deduction for applicant delay for the period of time from the filing of the RCE to the filing of the status inquiry.
While I would love to challenge this interpretation of the statute in court, my clients probably would rather wait a few more months for an Office Action than incur those costs. Still, I would like to see the USPTO’s explanation of how filing a status inquiry possibly could constitute a failure of the applicant “to engage in reasonable efforts to conclude prosecution,” under 35 USC § 154(b)(2)(C).