Q2: Changes in procedure or regulation

What change(s), if any, in Office procedure(s) or regulation(s) would reduce your need to file RCEs?

Q2: Changes in procedure or regulation

EXPAND ON DRAWINGS IN APPLICATION PROCESS

I am currently in the process of filing for a patent with the assistance of an attorney. The adage,"A Picture Is Worth A Thousand Words", needs to be applied to the application process. Utilization of videos and photos of the device or item that is being submitted for a patent would speed up the process dramatically. In working with my patent attorney, I supplied her with a detailed video along with photos, with explanation ...more »

Submitted by (@alanklein)
2 comments

Voting

1 vote
1 up votes
0 down votes
Active

Q2: Changes in procedure or regulation

Abandon concept of Non-Final / Final

There is a very simple solution to the RCE problem: abandon the concept of a non-final and final office actions. These are hold-overs from the pre-1995 days when delay of prosecution did not eat into patent term. Just allow the applicant as many responses as they want before they either give up or appeal. Adjust the Examiner count (e.g. 0.5 per action) and the fees per response accordingly, perhaps escalating. Often ...more »

Submitted by
Add your comment

Voting

0 votes
0 up votes
0 down votes
Active

Q2: Changes in procedure or regulation

Award count (0.25) for non-final AOM to suggest allowable matter

Pay the Examiners for more than just FAOMs. Award counts (e.g. of 0.25) for a subsequent non-final AOM which indicates allowable/patentable subject matter. The current system, and the one before it, reward an Examiner for writing one FAOM and then sticking to it at each stage, unless its deficiencies are demonstrated so clearly that the Examiner must write another, substantively different, FAOM, and then only in response ...more »

Submitted by
Add your comment

Voting

2 votes
2 up votes
0 down votes
Active

Q2: Changes in procedure or regulation

Modified Provisional Application, to narrow claims before RCE

Here is an idea for a Pilot that we think both the office and the Patent Bar would accept. We believe a modified provisional application process offers the best alternative to fixing RCE and prolonged prosecution and the backlog. RCE serves a purpose but the RCE backlogs are a symptom of a bigger problem and tinkering with the current process might create more downstream issues. Premise**: Would searching the ...more »

Submitted by
2 comments

Voting

0 votes
0 up votes
0 down votes
Active

Q2: Changes in procedure or regulation

Negaative Count Incentives for Unreasonable Delays

The Patent Office should implement a negative count for applications under RCE that remain too long at the Patent Office without a response. The incentive should be increased according to the length of time spent on the Examiner’s docket. Responses to RCEs should normally be provided within three months. At four months without a response, a negative 0.1 count per case should be attributed to the Examiner. At six ...more »

Submitted by
1 comment

Voting

-1 votes
0 up votes
1 down votes
Active

Q2: Changes in procedure or regulation

End RCE practice-Institute progressively increasing response fee

As noted elsewhere, one Response before Final is too short. Why have a limit? Compact prosecution is a false goal if it results in useless patents. And the current RCE practice assumes that no prosecution needs more than one Reponse if the attorney is being "reasonable;" when in fact a "reasonable" attorney (working with a reasonable examiner) may need different numbers of responses in different cases. Why not substitute ...more »

Submitted by
Add your comment

Voting

1 vote
1 up votes
0 down votes
Active

Q2: Changes in procedure or regulation

Allow a second Response before Final OA

One response before Final OA is simply too few. Typical scenario: assume attorney does thorough and conscientious job preparing the patent application. When the attorney receives the first OA, usually the rejection makes no sense. The cited art doesn't seem to say what the examiner says it says, or if it does say that, the art's teaching seems to be unrelated to the invention. Attorney files first response ...more »

Submitted by
1 comment

Voting

8 votes
8 up votes
0 down votes
Active

Q2: Changes in procedure or regulation

Solutions to the RCE Backlog Problem

The RCE problem is due in the main to Examiners finally rejecting claims that should either: 1) be allowed or 2) be given nonfinal rejections. The current system of measuring performance by which Examiners get a point for a disposal, encourages Examiners to move cases to final rejection or allowance as early in the prosecution of the application as possible. They get credit for allowance, but fewer questions are ...more »

Submitted by
Add your comment

Voting

0 votes
0 up votes
0 down votes
Active

Q2: Changes in procedure or regulation

Proposed USPTO RCE Improvements:

Each RCE Office Action within normal prosecution timing (i.e., within 2-3 months of Response/Amendment). Applicant requests one additional round of prosecution at a time (not the current 2 rounds). Additional search & interview included with each round of prosecution. Multiple interviews totaling 2-4 hours is ok. Fee per additional round, comparable to a normal round of prosecution. As many prosecution rounds ...more »

Submitted by (@inventor0875)
Add your comment

Voting

0 votes
0 up votes
0 down votes
Active

Q2: Changes in procedure or regulation

Count System Changes to Stop Improper Final Rejetions

I am an examiner at the USPTO and have already submitted this idea via the internal ideascale site, where it is currently awaiting moderator approval, but it is relevant to this discussion so I will repost. The response I have seen in the patent blogosphere to the 11 questions put out by the office indicates that many practitioners view the practice of incentivizing examiners to close prosecution as a primary culprit, ...more »

Submitted by (@elizaosenbaughstewart)
2 comments

Voting

1 vote
2 up votes
1 down votes
Active

Q2: Changes in procedure or regulation

Reducing the RCE Backlog Requires PTO Processing Changes

1. Change the Status of an RCE filing from A Continuation New Application and Process an RCE Filing As An Amended Application First, it should be abundantly clear that reclassifying the RCE as a “new” application and diverting emphasis or priority from their examination creates more of a problem that it solves. So, I would first advocate for reclassifying the RCE back to their original and proper status of the ...more »

Submitted by (@annette.thompson)
3 comments

Voting

6 votes
6 up votes
0 down votes
Active

Q2: Changes in procedure or regulation

Examiner suggestions could make communications true negotiations

In a true negotiation, both parties offer suggestions for an agreement. But in many patent prosecutions, the suggestions for agreed-upon claims come only from the applicants. The Examiner's only role in many cases is to rule on the applicant's suggestions, so these cases are not the subject of true negotiations. I personally welcome suggestions from Examiners for claim language/ claim scope, even when those suggestions ...more »

Submitted by (@johnogilvie)
1 comment

Voting

11 votes
11 up votes
0 down votes
Active