Checking the status of a U.S. patent application after you’ve filed a Request for Continued Examination (RCE) can be confusing and disheartening. Even if you’ve filed several responses and conducted an examiner interview, the USPTO’s Patent Application Information Retrieval (PAIR) system will show the status of your application as “Docketed New Case—Ready for Examination.” A telephone call to the examiner is not likely to be more helpful. The examiner probably will remind you that he no longer has a set time period for acting on an application after an RCE is filed, but will promise to get to it “soon.” Since I have several applications languishing in post-RCE purgatory, I asked Andrew Mitchell, our Director of IP Technical Support, if he could pull a report on the RCEs that we have filed since the new RCE docketing procedures took effect, and how long it took for the USPTO to issue the next action.
We looked at RCEs filed between December 1, 2009 and May 15, 2010, so that the RCEs were filed after the new docketing procedures took effect and at least two months ago. The report included 460 RCEs, with the shortest time to action being five days, and the longest being greater than 226 days (that application is still awaiting action!).
- 19% of the applications with RCEs filed between December 1, 2009 and Jan 15, 2010 waited more than six months for an action, or are still waiting.
- 31% of the applications with RCEs filed between December 1, 2009 and March 15, 2010 waited more than four months for an action such that USPTO delay will accrue under the Patent Term Adjustment (PTA) provisions.
- 58% of the applications waited more than 60 days for an action.
- 20% of the applications were acted on with 30 days—of these about 35% were allowed.
- 33% of the applications were allowed in the first action after the RCE, while 66% were rejected.
The “New” RCE Docketing Procedures
Up until November 15, 2009, an application with an RCE was placed on an examiner’s “amended” docket, and an examiner was expected to act on the application within two months. Under the new docketing procedures, less than 50% of our applications were acted on within 60 days. This is because an application with an RCE now is placed on an examiner’s “special new” docket (which includes continuation and divisional applications), and there is no set time period for the examiner to act. The only requirement is that an examiner act on at least one item per month from this docket. Depending on the size of an examiner’s “special new” docket, it could take some time before he would be required to act on a given application.
While these docketing changes were made to give examiners more control and flexibility in managing workload, it is disconcerting that there is no expected time frame for acting on an application after an RCE is filed. This is particularly problematic when the applicant has conducted an interview with the examiner, and then filed an RCE to make agreed-upon claim amendments and/or submit new evidence in support of patentability (such as a declaration presenting experimental results or evidence of non-obviousness). The longer the examiner takes to act on an application after an interview, the less worthwhile the interview will have been.
If post-RCE examination is routinely delayed for months after an interview, applicants will be discouraged from spending their time, effort and money on interviews. Thus, the new RCE docketing procedures may have an unintended consequence of undermining USPTO efforts to encourage interviews.
The new RCE docketing procedures also conflict with USPTO goals of compact prosecution. The pendency of RCE applications is measured from the filing date of the application, not the filing date of the RCE. Thus, permitting an examiner to wait indefinitely before acting on an RCE application will prolong pendency and delay prosecution.
This delay also results in inefficient examination. Instead of encouraging examiners to act on an application while the issues are fresh from the previous action and/or interview, this policy permits examiners to wait so long that they may have forgotten details of the invention, intricacies of the prior art, and any explanations or demonstrations provided during an interview. While applicants can be awarded USPTO delay under the PTA provisions, PTA does not compensate for all costs of examination delays, and does not eliminate the frustrations of waiting month after month for an action.
Time to Reassess
I urge the USPTO to review its own data on RCE processing, and consider how to ameliorate the unintended consequences of the new RCE docketing procedures. The USPTO should at least bring examination expectations in line with the PTA provisions, and require examiners to act on an application within four months of an RCE.
While the USPTO may want to discourage RCEs altogether, our data show that RCEs can meaningfully advance prosecution, with about 1/3 resulting in an allowance. Thus, examiners should be encouraged to act on RCE applications promptly, rather then letting them languish.