The USPTO has been touting recent data indicating that it continues to make progress in reducing the backlog of new patent applications awaiting examination. At the same time, the number of applications awaiting examination after a Requests for Continued Examination (RCE) has ballooned. I am frustrated by the USPTO’s attitude towards RCEs, and its willingness to relegate them to examination purgatory. Permitting applications to languish midstream in prosecution is inefficient, and drags down innovation, investment and commercialization just as much as delaying examination of new applications.
Progress On New Applications
A recent update to the USPTO’s Data Visualization Center Patents Dashboard shows continued progress in reducing the number of new applications awaiting examination. Between October 2009 and May 2011, the USPTO achieved a net reduction of 50,294 applications in its backlog queue. The USPTO has made a conscious effort in this regard, such as through its “Clearing the Oldest Patent Applications” (COPA) initiative. The USPTO was particularly excited to announce that the number of new applications awaiting examination dropped to under 700,000 at the end of June.
The USPTO’s progress in examining new applications has been offset on almost an application-for-application basis by an increase in the backlog of applications awaiting examination after an RCE. The USPTO’s data show a net increase of 47,347 RCEs over the same time period.
Why Doesn’t The USPTO Care About RCEs?
The USPTO’s willingness to permit RCEs to languish may be motivated by different political pressures: It’s easy for Congress and the mainstream media to understand the new application backlog and write sensational headlines. On the other hand, understanding RCEs requires more detailed knowledge of the patent examination process that may cause non-practitioners’ eyes to glaze over.
The USPTO also may believe that RCEs stem from applicant delay tactics: If only applicants would write clear, patentable claims to begin with, examiners would be able to allow applications in the first rounds of prosecution.
This attitude ignores the fact that RCEs often are necessary despite an applicant’s best efforts to advance prosecution. The current IDS rules mandate RCEs in many circumstances, and anytime amendments made in a first response trigger a new prior art rejection in a final Office Action, an RCE may be required to make any further amendments or submit any new evidence to support patentability—even if the new amendments/evidence only are necessary because of the new prior art rejection.
USPTO Policies Encourage Delay Of RCEs
The USPTO actively promotes policies that permit RCE’s to await examination for indefinite time periods. Since mid-November 2009, RCEs have been placed on an examiner’s “special new” docket, from which an examiner need only examine one application (the one with the oldest U.S. filing date) per month. Because divisional and continuation applications also are on the “special new” docket, an RCE can be pushed further back in line every time a divisional or continuation application is added to the examiner’s special new docket.
Guidance issued to examiners, “Changing the Patent Examiner Count System: New Rules for Docketing Requests for Continued Examination (RCEs)” (DOC), encourages examiners to take up applications “out of turn” if they are believed to be in condition for allowance–but how can an examiner know a post-RCE application is allowable if he or she doesn’t look at it first? The USPTO answers this question by encouraging applicants to request interviews to explain allowability and request prompt examination. I have had some success in obtaining interviews in those circumstances, but still waited months after the interview for the next Office Action.
The USPTO’s productivity measures (the “count system”) also discourages prompt examination of RCEs. Examiners are required to earn a certain number of counts per pay period, generally 5 or more. Examiners earn 1.25 counts for a first Office Action in a new application, but only earn 1.0 count for a first Office Action in a first RCE, and 0.75 counts for a first Office Action in a second RCE. Although the USPTO suggests that this count differential may be balanced by an examiner’s perception that an Office Action in an RCE will require “less work” because the application already is familiar, it is not clear how often this “soft” factor will outweigh the hard difference in count value.
The USPTO’s COPA initiative also has a direct impact on RCE delays. Through COPA, examiners are encouraged or required to take up new applications, rather than voluntarily examining more than one special new application per month.
All in all, the USPTO leaves it up to examiners and applicants to informally keep RCEs moving along in a timely manner, but promotes policies that discourage examination of RCEs and doesn’t provide applicants with any formal avenue for recourse when an RCE experiences undue delay.
Are Medical Devices Really An Outlier?
Apparently the medical device industry has been hit hard by RCE delays, and Director Kappos addressed its concerns during a recent meeting of the Medical Device Manufacturers Association (MDMA). As reported in BNA’s Patent, Trademark and Copyright Journal, Director Kappos acknowledged that the technology center responsible for examining medical device applications has lagged behind in acting on RCEs. Now that the USPTO identified that problem, it promised to take steps to rectify it.
Is the technology center for medical devices the only problem area? My practice suggests otherwise!
Does it take industry-wide complaints for the USPTO to identify undue RCE delays? It wouldn’t have to, if the USPTO would report RCE data by technology center!
Many thanks to Bryan Wilson, a Patent Agent and Law Clerk at Foley & Lardner LLP, for his significant contributions to this article.