Taking a Stand on USPTO Request for Continued Examination (RCE) Policy

31 January 2013 PharmaPatents Blog

Next week (February 4, 2013) is the deadline for submitting comments in response to the USPTO’s request for feedback on Request for Continued Examination (RCE) practice. (This article provides more information on the request for feedback.) The USPTO’s treatment (or neglect) of RCEs will become even more frustrating after March 19, 2013, when the costs for filing RCEs will increase significantly. I urge stakeholders in the biotechnology and pharmaceutical industry – where RCEs are a normal step in the patent prosecution process – to make their voices heard and urge the USPTO to adopt policies and practices that ensure that Requests for Continued Examination are examined in a timely manner.

The USPTO’s Neglect of RCEs

RCEs used to be placed on an examiner’s “amended” docket, and an examiner was expected to act on RCE applications within two months. That changed on November 15, 2009, since when new RCEs have been placed on an examiner’s “special new” docket (which includes continuation and divisional applications). There is no set time period for an examiner to act on an application on his or her “special new” docket – the only requirement is that he or she act on at least one application every other bi-week (e.g., about one per month).

In addition to moving RCEs to a slower moving docket, the USPTO made changes to its “count” system (which is used to assess examiner productivity) that disincentivizes the examination of RCEs. For example, an examiner earns more credit for issuing a first Office Action in a continuation or divisional application than for issuing an Office Action in an RCE. Thus, to the extent that an examiner has flexibility in selecting cases for examination from the “special new” docket, he or she has concrete reasons to select continuation or divisional applications before RCEs.  

The RCE Backlog

Not surprisingly, these USPTO policies and procedures have led to a constantly growing backlog of RCEs awaiting continued examination. USPTO data from December 2012 (the most recent available on the USPTO website) show that there are over 103,775 RCEs awaiting continued examination (up from 73,464 as of December 2011). While the USPTO reports that the average time from the filing of an RCE to an Office Action is about 6 months, that data is largely meaningless because it only takes into account RCEs where an Office Action has been issued, and ignores all RCEs awaiting examination.

Adding Insult to Injury

The USPTO’s new fee schedule adds further insult to injury by significantly increasing the costs of filing an RCE. (Please see this article for a broader look at the new USPTO fee schedule.) For a large entity, the fee for a first RCE will increase from $930 to $1200, while the fee for a second or subsequent RCE will increase from $930 to $1700.

(The USPTO might as well set the RCE fees at $5200 and $5700, because applicants will have to pay the $4000 fee for prioritized examination (Track 1) if they want to obtain examination of their RCEs.)

A Real-World Example

I am prosecuting an application where an RCE was filed in early 2011. After almost two years, it is about 20th in queue on the examiner’s special new docket. If the examiner follows USPTO policy and examines one case from that docket every other bi-week, it will be late 2014 before this case receives an Office Action. The news is worse for other applications assigned to this examiner, because his current special new docket includes about 50 cases. If the examiner follows USPTO policy and examines 13 cases from that docket every year, the most recent RCEs will wait four years for an Office Action.

I do not understand how the USPTO can accept these extreme delays mid-stream in the examination process, or how the USPTO can fail to appreciate that these extreme delays impede its goals of stimulating investment and innovation. By focusing on the front-end of the examination process (reducing the backlog of unexamined applications) without considering the process as a whole, the USPTO has lost sight of the fact that it is granted patent rights, not first Office Actions, that are valued in the commercial marketplace.

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