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