Campaign: Q6: RCEs after final rejections

Forwarding to Examiner time impacting Extension of Time Fee

The extension of time cost can become significant relative to the RCE fee, making it more likely we would more quickly file an RCE. Especially when the legal instrument person has taken 1-1.5+ months to officially forward our amendment/response to the Examiner (which starts the Examiner clock at that time). Forwarding to the Examiner needs to reliably take only a few days (not weeks or months).

Submitted by (@inventor0875)

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Campaign: 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)

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Campaign: 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)

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Campaign: Q3: Interviews

Provide Simple Pre-Search Interview Process

Examiners often seem to have only cursory understanding of invention before initial search. Often only until interviewing at second office action do they say "ah ha". Allow for simple pre-search interview---no onerous requirements, no discussion about prior art on the record. Simply present and explain the invention, invite examiner questions and examiner can ask 112 issues regarding the claims before the initial search. ...more »

Submitted by (@waynesobon)

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Campaign: Q10: Avoiding RCEs

strategy/strategies employed to avoid RCEs

The best strategy is to file 1.116 amendments as soon as possible and have interviews, then file additional 1.116 amendments and, when appropriate, 1.132 declarations.

Submitted by (@mfein0)

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Campaign: Q8: RCEs and order of examination

after final practice

The change in order of examination of RCEs did not affect after final practice. Most attorneys request interviews after final rejections, file requests for reconsideration, possibly submit a 1.131 or 1.132 declaration, and if those fail, there are no alternatives but to file an RCE.

Submitted by (@mfein0)

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Campaign: Q7: Amendments after final rejections

amendments after final

I think everyone favors filing an amendment or request for reconsideration after final to filing an RCE.

Submitted by (@mfein0)

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Campaign: Q3: Interviews

effect of PTO interview practice on decision to file RCE

I think the PTO has directed examiner's to be fair and reasonable in allowing interviews after final rejections but they have made it almost impossible to reach an agreement on an amendment to overcome the rejection(s) because the examiners always say the amendment requires a further search or raises a new issue so you have to file an RCE to get the amendment entered (even if the examiner agrees that it overcomes the ...more »

Submitted by (@mfein0)

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Campaign: Q8: RCEs and order of examination

Provide further disincentives for extensions of time.

The USPTO doesn't bear all of the responsibility in reducing pendency. Some of the responsibility should fall with applicants and their practitioners who purchase extension after extension, which is a major driver in pendency length. Currently, RCE's are processed in order of effective filing date. My idea would be to reduce the effective fiing date of the application for purposes of examination order in RCE's by ...more »

Submitted by (@ericmessersmith)

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Campaign: Q6: RCEs after final rejections

Allow Examiners to conduct an additional search after final

Between myself and fellow practitioners, I know of too many instances where an Examiner refuses entry of an after final amendment on the grounds that it will require an additional search, only to then allow the case on first action after an RCE. (This happens, by the way, even when the claim amendments after final include nothing more than that which was within the scope of original claims anyway, which is a bit ridiculous). ...more »

Submitted by (@charlesrattner)

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Campaign: Q11: Other reasons for filing RCEs

Allow submission of IDS's After Final and After Allowance

A significant number of RCEs are filed as a result of references received in related applications, in foreign and US prosecution. If there were a procedure to allow the filing of an IDS during any phase of prosecution, a significant number of RCEs would be avoided. Especially for larger families of cases, the inability to submit references after a final action or allowance can lead to an infinite cycle of RCEs as references ...more »

Submitted by (@judiths)

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Campaign: 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)

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