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 »
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 »
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 »
(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 »
None, we expect to file RCEs now because we must start with the broadest claims we think the client is entitled to and the Examiners push to final rejection too early to get their disposal credit so we see RCEs as likely if not inevitable. Hence, we have no strategy to avoid RCEs. Our strategies are to get the broadest claims allowed at the lowest total cost for our clients.
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 »
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 »
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 »