A patent applicant will file a Request for Continued Examination (RCE) after a final Office Action in order to continue prosecution before the examiner, such as to make claim amendments and/or submit evidence that is not permitted under 37 CFR § 1.116 (which limits the amendments and evidence that will be admitted after final). One focus of the Kappos administration has been to reduce the rate of RCE filings in general, and to address the problem of “RCE churning” by examiners. However, a provision of the MPEP actually encourages an examiner practice that necessitates serial RCEs. If the USPTO is serious about reducing RCE churning, it should eliminate MPEP § 706.07(b).
The Problem of RCE Churning
“RCE churning” refers to an examiner’s practice of forcing an applicant to file an RCE so that the examiner can earn extra credit (“counts”) for his or her own performance goals. For example, an examiner may refuse to enter a minor amendment after final, but then quickly allow the application after an RCE (which requires a substantial fee) is filed. By this practice, the examiner gets credit for the “disposal” of the pre-RCE application, for the filing of the RCE, and for the allowance of the post-RCE application.
As Director Kappos recently wrote on his blog, the USPTO has revamped the examiner count system in a way that was designed “to reduce any incentive our examiners may have to unnecessarily promote RCE practice.” But, although it has been six months since those changes took effect, the RCE rate has not declined.
The Motor That Drives Serial RCEs
One particular examiner practice that may exacerbate the RCE problem and undermine the USTPO goal of compact prosecution is actually encouraged by MPEP § 706.07(b). This provision permits an examiner to make the first Office Action after an RCE another final Office Action under most circumstances:
The claims of an application for which a request for continued examination (RCE) has been filed may be finally rejected in the action immediately subsequent to the filing of the RCE (with a submission and fee under 37 CFR 1.114) where all the claims in the application after the entry of the submission under 37 CFR 1.114 (A) are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR 1.114, and (B) would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to the filing of the RCE under 37 CFR 1.114.
This means that an applicant may file an RCE to obtain entry of claim amendments after final, only to be faced with another final Office Action. If the new final Office Action raises issues that the applicant would like to address by further claim amendments and/or new evidence, another RCE may be required, leading to serial RCEs.
Ironically, this same provision actually discourages compact prosecution strategies:
However, it would not be proper to make final a first Office action in a continuing or substitute application or an RCE where that application contains material which was presented in the earlier application after final rejection or closing of prosecution but was denied entry because (A) new issues were raised that required further consideration and/or search, or (B) the issue of new matter was raised.
This means that if an applicant submits claim amendments after final in a response filed under 37 CFR § 1.116, the examiner issues an Advisory Action refusing to enter the amendments because they raise new issues, and the applicant then files an RCE to obtain entry and consideration of the amendments, the first Office Action after the RCE cannot be made final.
The overall effect of MPEP § 706.07(b) is to encourage applicants to pursue a prosecution strategy that extends prosecution, by going through the “dance” of filing a response, waiting for an Advisory Action, and then filing an RCE, instead of following the more compact approach of filing a response with an RCE in the first instance. The extended approach can add months to the course of prosecution, but avoids the risk of an immediate final Office Action and the costs and delays of a serial RCE.
The decision to make the first post-RCE Office Action a final one is discretionary, and many examiners do not follow this practice. But, of course, some do. If the USPTO is serious about addressing the problem of unwarranted RCEs, it should revoke MPEP § 706.07(b) and eliminate this driving force behind many serial RCEs.