USPTO Reshuffles the RCE Deck | Foley & Lardner LLP

The USPTO still is considering information gathered during its RCE Outreach program, but it has made some internal changes that should lead to more prompt examination after a Request for Examination (RCE) is filed. However, because that the backlog of RCEs awaiting examination has climbed to over 110,000, it could be some time before applicants notice an appreciable difference in RCE processing times.

Reshuffling the Deck

In late 2009, when the USPTO focused its resources on reducing the backlog of unexamined applications, it delayed the examination of RCEs by moving them from the “Amended” docket to the “Special New Case” docket, which also includes continuation and divisional applications. Under that system, RCEs were docketed for examination in order of the RCE filing date, which placed them at the back of the line behind continuation and divisional applications, which are docketed for examination in order of their filings dates.

Now, RCEs will be docketed as of the application filing date, not the RCE filing date, which should put them ahead of newer continuation and divisional applications.

Credit Where Credit Is Due

The USPTO also reduced the count value of RCEs in 2009, in an effort to promote compact prosecution and disincentivize RCEs. (Clearly that strategy backfired, as it disincentivized the examination of RCEs without reducing the filing of RCEs!)

Now, at least for the rest of the current fiscal year (e.g., through September 30, 2013), examiners will be able to earn two full counts for examining an RCE, putting them on par with other applications.

RCE or New Continuation Application?

With post-RCE examination delays extending to months or years, many applicants now consider filing a new continuation application instead of an RCE, because a continuation application may be examined sooner. (Indeed, several examiners have suggested such a strategy to my clients.) Even if the USPTO’s new efforts are successful in reducing the RCE backlog, applicants may continue to consider this strategy because of the USPTO’s new fee structure, which makes a second or subsequent RCE more costly than a new application. On the other hand, if an application has accrued patent term adjustment due to USPTO examination delays, or has an extensive record that would be difficult to recreate in a new continuation application, an applicant may decide to wait out the RCE delay.

Getting to the Root of the RCE Problem

While I am hopeful that the USPTO’s RCE Outreach will lead to more substantive changes that get to the root of the RCE problem and reduce the need for RCEs, I appreciate the USPTO’s efforts in taking these interim steps to address the RCE problem.

This blog is made available by Foley & Lardner LLP (“Foley” or “the Firm”) for informational purposes only. It is not meant to convey the Firm’s legal position on behalf of any client, nor is it intended to convey specific legal advice. Any opinions expressed in this article do not necessarily reflect the views of Foley & Lardner LLP, its partners, or its clients. Accordingly, do not act upon this information without seeking counsel from a licensed attorney. This blog is not intended to create, and receipt of it does not constitute, an attorney-client relationship. Communicating with Foley through this website by email, blog post, or otherwise, does not create an attorney-client relationship for any legal matter. Therefore, any communication or material you transmit to Foley through this blog, whether by email, blog post or any other manner, will not be treated as confidential or proprietary. The information on this blog is published “AS IS” and is not guaranteed to be complete, accurate, and or up-to-date. Foley makes no representations or warranties of any kind, express or implied, as to the operation or content of the site. Foley expressly disclaims all other guarantees, warranties, conditions and representations of any kind, either express or implied, whether arising under any statute, law, commercial use or otherwise, including implied warranties of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Foley or any of its partners, officers, employees, agents or affiliates be liable, directly or indirectly, under any theory of law (contract, tort, negligence or otherwise), to you or anyone else, for any claims, losses or damages, direct, indirect special, incidental, punitive or consequential, resulting from or occasioned by the creation, use of or reliance on this site (including information and other content) or any third party websites or the information, resources or material accessed through any such websites. In some jurisdictions, the contents of this blog may be considered Attorney Advertising. If applicable, please note that prior results do not guarantee a similar outcome. Photographs are for dramatization purposes only and may include models. Likenesses do not necessarily imply current client, partnership or employee status.