William F. Smith of Woodcock Washburn LLP and Joseph Mallon of Knobbe Martens (colleagues on the IPO Patent Office Practice Committee)** have prepared a white paper that encourages us to take a step back from the current U.S. patent examination paradigm, and move forward to “Compact Prosecution 2.0.” Their proposal would eliminate two significant patent examination “dead zones” and result in a more efficient and cost-effective patent examination process.
**The view expressed are those of the authors, and are not to be attributed to IPO, their clients, their firms, or their firms’ clients.
Compact Prosecution 1.0
The current examination paradigm operates under principles of “compact prosecution” that reward examiners for quickly advancing an application to a “final” outcome–final rejection, allowance, RCE, or abandonment. From an examiner’s perspective, all of the final outcomes are equal. On the other hand, an applicant’s objective is allowance. Thus, applicants must continue prosecution by filing after-final responses and/or RCEs. However, both of those steps involve “dead zones” where the ability to advance prosecution towards allowance is artificially restricted by after-final practice and the RCE backlog. According to Smith and Mallon, these dead zones can result in patent examination being put on hold for from 2.5 to 19.5 months (or more). How is that compact?
One Chance Is Not Enough
Under the current examination paradigm, an applicant only has one chance to address all of the issues raised in the first Office Action, and can only address any new issues raised in the final Office Action by cancelling rejected claims or making amendments that would clearly address the new issues without requiring further consideration. As I have written previously, one chance is not enough. Indeed, as Smith and Mallon explain, both technology and patent law have gotten exponentially more complex in the 40 years since the USPTO adopted the Compact Prosecution paradigm. It is unreasonable to expect even highly motivated examiners and applicants to reach agreement on patentable subject matter in just one exchange of claim amendments, explanations, and supplemental evidence.
As summarized by Smith and Mallon, “[t]he hallmark of Compact Prosecution 2.0 is, once a patent application is initially examined, the examination process continues without artificial stops until the case is allowed, appealed or abandoned, i.e., no dead zones.” As they explain, “[b]y keeping the case under constant consideration, it is believed that the overall efficiency of patent prosecution will be significantly enhanced.” Without the inefficiencies caused by the dead zones, “the issues will be more quickly narrowed and focused so that final resolution of the patentability issues will be more efficiently and effectively concluded which will result in increased capacity in the Examining Corps to reduce the backlog of unexamined patent applications.”
The basic tenets of Compact Prosecution 2.0 include the following:
- Eliminating “final” rejection practice
- Giving an applicant two opportunities to amend claims and/or introduce new evidence as a matter of right*
- Requiring approval before a third Office Action can be issued
- Requiring an RCE fee for a response to a third Office Action (with escalating RCE fees with each subsequent RCE)
- Giving an applicant two opportunities to amend claims and/or introduce new evidence as a matter of right after an RCE
- Encouraging interviews at any stage, including after a third Office Action or RCE
- Retaining the applicant’s right to appeal after two rejections
- Permitting applicant participation in the appeal conference
- Offering optional mediation by an APJ after an Examiner’s Answer
*According to the USPTO, a significant majority of RCE applications are allowed after the first post-RCE resposne. That suggests that if applicants could make two responses as a mater of right, many RCEs could be avoided.
Smith and Mallon also suggest changes to examiner productivity measurement and docket management systems, to give examiners more discretion over how much time to afford a given application, and to align examiner incentives with the overall goal of completing the examination process.
It Is Time To Try Something Different
The USPTO should take an honest look at the current prosecution paradigm, and consider the possibility that it is time to try something different. As Albert Einstein said,
Insanity is doing the same thing over and over again and expecting different results.
We know that the current system is not working. Indeed, as Smith and Mallon state in the conclusion of their white paper:
Despite intense efforts over the past thirteen years through two administrations to lower the unexamined new case backlog, it remains stubbornly high and is now accompanied by high numbers of RCEs and ex parte appeals. …. [I]t is time to change. Compact Prosecution 2.0 offers a break from the past system that has resulted in the present circumstances and provides a new path to accomplishing the twin goals of reducing the unexamined new case backlog and expeditiously concluding the examination process once it is started.