Q2: Changes in procedure or regulation

RCEs are a Symptom rather than a Problem

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 ...more »

Submitted by (@denniscrouch)
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Q11: Other reasons for filing RCEs

Patent Term Adjustment (PTA) and the New Incentive for RCEs

One new problem that is just now rising comes from the Exelixis v. Kappos decision in the E.D.Va. Prior to that case, it was thought that RCE filing would have the negative effect of limiting patent term adjustment (PTA). However, that case held that a patentee will still be able to collect significant day-for-day PTA even when filing multiple RCEs. This provides a new incentive for applicants to be happy with delays ...more »

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Q10: Avoiding RCEs

Have both parties put all their cards on the table

I recently received a first Office Action (OA) for an application and then set up an interview. I emailed the Examiner various portions of the Specification that were disclosed but not claimed that I was considering for amendments to the claims. The Examiner emailed back, indicating he had done another search, and cited different portions of references, for each portion of the Specification that I had sent him. I then ...more »

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Q6: RCEs after final rejections

Appeal time is too long

I generally favor an RCE over an appeal because I might be able to resolve the case faster with an RCE as opposed to an appeal. If the appeal process were faster, I might favor an appeal, instead.

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Q2: Changes in procedure or regulation

Resolve prelim. 101 and 112 issues before 1st OA

If preliminary 101/112 issues were resolved before the 1st OA (e.g., over the phone / via e-mail), then applicants may have a better chance to overcome cited art / come to a resolution before an RCE is needed.

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Q10: Avoiding RCEs

RCE Practice

(1) If within your practice you file a higher or lower number of RCEs for certain clients or areas of technology as compared to others, what factor(s) can you identify for the difference in filings? Not applicable (2) What change(s), if any, in USPTO procedure(s) or regulation(s) would reduce your need to file RCEs? None (3) What effect(s), if any, does the USPTO’s interview practice have on your decision to file ...more »

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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)
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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 »

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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 »

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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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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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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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