In my view, RCEs are not particularly a problem per se. Rather, RCEs are a symptom of a troubled application-examination complex that typically requires multiple rounds of negotiation before the applicant and examiner agree on the appropriate claim scope. RCEs are particularly highlighted largely because of the count system that has treated RCE filings as new applications. Practicing patent attorneys do not see RCEs as new applications (except for the fees due) but rather a next step in ordinary patent prosecution.
Bringing this together, reducing the number of rounds of formal negotiation is an important key for reaching the PTO’s stated goals of pendency reduction.
The PTO has taken some steps in this direction, such with early examiner interviews and a revived focus on identifying potentially patentable claim scope. However, additional steps could focus on (1) incentives for applicants to begin with reasonable claims along with examiner training that, in appropriate cases, first action allowances are very welcome; and (2) methods of providing more predictability in the examination process. These steps fall within the categories of managing inputs and expectations, both of which often lead to more successful negotiations.
The incentives to begin with claims of well defined and reasonable scope might include (a) fee reduction for filing claims that are written in light of a pre-filing search; (b) fee reduction for filing claims that include only terms defined within the specification; (c) add a pre-examination action demanding that applicants identify how claim terms are explained within the specification; (d) when applicants have drafted a set of claims that are patentable without amendment, examiners should be empowered to issue a first action allowance and perhaps offer some amount of fee reduction.
One method for providing more predictability in the examination process would be to rely more heavily on foreign search and examination reports. In a well operating system, those reports would help to reliably predict whether claims being pursued are patentable. The current perception is that those reports are given little to no credence except in the PPH context.
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