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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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 »

Submitted by (@denniscrouch)
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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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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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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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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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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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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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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 »

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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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Q3: Interviews

Quasi-Round of Prosecution by Enhanced Interview Procedure

A way to obtain the best of both worlds - a) the granularity of iterative prosecution and b) claim development without sacrificing official "rounds" of prosecution - is to expand the interview process. Currently, the time allotted to examiners for interviews is short (normally one hour including prep time), and the interview practice is very open-ended, but an interview can be enhanced into a quasi-round of prosecution ...more »

Submitted by (@steve.sax)
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Q3: Interviews

The Pre-Exam Conference, Idea Further Elaborated

A couple points were brought out about a pre-Exam Interview concept, but may be buried in the comments or were in other discussions, so I just wanted to flush out the idea on its own. The idea is edited a bit, and additional points are listed below it: (To review: Before FAOM, if the Examiner feels that the claims are overly broad or contain a 112 error that would hinder prosecution, then the Examiner can call the ...more »

Submitted by (@steve.sax)
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