Tag Archives: Request for Continued Examination (RCE)

When Does An RCE Stop The PTA Clock?

In Novartis v. Lee (Fed. Cir. 2014), the Federal Circuit agreed with the USPTO that “time spent in a continued examination” does not count towards the three years the USPTO is allotted to examine a patent before if it must award Patent Term Adjustment (PTA) for “B” delay. Under the USPTO’s rules, filing a Request for Continued Examination … Continue reading this entry

Can You File An RCE In That U.S. National Stage Application?

Since the implementation of the America Invents Act on September 16, 2012, and the Technical Corrections Act on January 14, 2013, Applicants have been able to delay submission of an executed inventors’ oath/declaration in a U.S. patent application until payment of the issue fee. Although U.S. national stage applications could not immediately benefit from this rule … Continue reading this entry

Patent Term Adjustment In The Post-RCE Period

We know from Novartis v. Lee  that a patent application does not earn “B delay” type Patent Term Adjustment (PTA) from the time an RCE is filed until a Notice of Allowance is issued, but an application still can earn PTA for “A delay” when the USPTO takes more than four months after the RCE … Continue reading this entry

USPTO Proposes Revised Patent Term Adjustment Rules For RCEs Under Novartis

The USPTO has published proposed rules for calculating Patent Term Adjustment (PTA) for applications in which a Request for Continued Examination (RCE) has been filed, after the Federal Circuit held in Novartis v. Lee that the USPTO’s original rules were not consistent with the PTA statute. While the proposed rules appear to follow the Federal … Continue reading this entry

Federal Circuit Splits The Baby In Patent Term Adjustment Decision

The Federal Circuit issued its decision in the pending Patent Term Adjustment (PTA) appeals, resolving the issues raised in Exelixis I, Exelixis II and Novartis, in a precedential decision issued in Novartis AG v. Lee, Nos. 2013-1160, -1179 (Jan. 15, 2014); see also Exelixis v. Lee, Nos. 2013‑1175, -1198 (Jan. 15, 2014) (per curiam). The court interpreted 35 … Continue reading this entry

Compact Prosecution 2.0 -- Changing The U.S. Patent Examination Paradigm

William F. Smith of Woodcock Washburn LLP and Joseph Mallon of Knobbe Martens (colleagues on the IPO Patent Office Practice Committee)** have prepared a white paper that encourages us to take a step back from the current U.S. patent examination paradigm, and move forward to “Compact Prosecution 2.0.” Their proposal would eliminate two significant patent … Continue reading this entry

USPTO Launches New After Final Consideration Pilot Program To Reduce Requests For Continued Examination (RCEs)

In a Federal Register Notice published on May 17, 2013, the USPTO announced After Final Consideration Pilot Program 2.0 (AFCP 2.0) as part of its ongoing efforts to “reduce pendency by reducing the number of Requests for Continued Examination (RCE) and encouraging increased collaboration between the applicant and the examiner to effectively advance the prosecution of … Continue reading this entry

USPTO Reshuffles The RCE Deck

The USPTO still is considering information gathered during its RCE Outreach program, but it has made some internal changes that should lead to more prompt examination after a Request for Examination (RCE) is filed. However, because that the backlog of RCEs awaiting examination has climbed to over 110,000, it could be some time before applicants … Continue reading this entry

Taking A Stand On USPTO Request For Continued Examination (RCE) Policy

Next week (February 4, 2013) is the deadline for submitting comments in response to the USPTO’s request for feedback on Request for Continued Examination (RCE) practice. (This article provides more information on the request for feedback.) The USPTO’s treatment (or neglect) of RCEs will become even more frustrating after March 19, 2013, when the costs for … Continue reading this entry

The Patent Term Adjustment Pendulum Swings The Other Way

On January 28, 2013, Judge Brinkema of the U.S. District Court for the Eastern District of Virginia issued a decision in a different Exelixis v. Kappos Patent Term Adjustment (PTA) case (1:12cv574) (Exelixis II) that affirms the USPTO’s interpretation of 35 USC § 154(b)(1)(B)(i). Judge Brinkema’s decision in Exelixis II is in direct conflict with … Continue reading this entry

Maximizing Patent Term Adjustment Under Exelixis

A number of Patent Term Adjustment (PTA) cases have been filed in the U.S. District Court for the Eastern District of Virginia since the November 1, 2012 decision in Exelixis, Inc. v. Kappos. While most have presented straight-forward fact patterns, one complaint caught my attention because it brings to mind how applicants could manipulate the … Continue reading this entry

USPTO Appeals Exelixis Patent Term Adjustment Decision

As expected, the USPTO has filed a Notice of Appeal in the Exelixis patent term adjustment (PTA) case. As I summarized in this article, in a decision issued November 1, 2012 in Exelixis, Inc. v. Kappos, the U.S. District Court for the Eastern District of Virginia found that the USPTO’s interpretation and application of the … Continue reading this entry

USPTO Seeks Comments On Request For Continued Examination (RCE) Practice

The USPTO is seeking public comments on Request for Continued Examination (RCE) practice. In particular, the USPTO is “soliciting public feedback in an effort to better understand the full spectrum of factors that impact the decision to file an RCE.” The USPTO tends to have a negative view of RCEs, so this is an important opportunity … Continue reading this entry

District Court Denies Equitable Tolling, Fifth Amendment Taking In Novartis Patent Term Adjustment Case

In another significant Patent Term Adjustment (PTA) case decided last week (Novartis AG v. Kappos, Civ. Action No. 10-cv-1138 (Nov. 15, 2012)), the U.S. District Court for the District of Columbia found that Novartis could benefit from “ordinary tolling” but not “equitable tolling” in its efforts to obtain additional PTA for 23 patents. This decision by … Continue reading this entry

District Court Invalidates USPTO Interpretation Of Patent Term Adjustment RCE Carve-Out

In a decision issued November 1, 2012 in Exelixis, Inc. v. Kappos, the U.S. District Court for the Eastern District of Virginia has found that the USPTO’s interpretation and application of the “RCE carve-out” provision of the Patent Term Adjustment (PTA) statute is contrary to law. Although I wrote about some “RCE carve-out” challenges just … Continue reading this entry

Will Challenges To The USPTO's Patent Term Adjustment RCE Carve-Out Gain Traction?

In a complaint filed October 19, 2012, Biogen Idec MA Inc. joined patent holders such as Exelixis, Inc. and Human Genome Sciences, Inc., who are challenging the USPTO’s interpretation of 35 USC § 154(b)(1)(B)(i)). As I wrote previously, I think these challenges may have merit, and patent holders facing similar PTA calculations may want to … Continue reading this entry

Challenging The USPTO's Patent Term Adjustment Calculations For RCEs

Recently several cases have been filed that challenge the USPTO’s Patent Term Adjustment (PTA) calculations in patents where an RCE has been filed. For example, both Exelixis, Inc. v. Kappos (Civ. Action No. 1:12-cv-00574-LMB-TCB) (E.D. Va. May 25, 2012) and Human Genome Sciences, Inc. v. Kappos (Civil Action No. 1:12-cv-00607-GBL-TCB) (E.D. Va. June 1, 2012) raise … Continue reading this entry

Tour De COPA

Memorial Day Weekend takes on special meaning in the Washington, D.C. area. New flags are placed on the gravesites at Arlington National Cemetery, Rolling Thunder comes to town to remind us of soldiers who are prisoners of war or missing in action, and families and friends honor their loved ones who served this country, visiting the Vietnam … Continue reading this entry

Holding The USPTO Accountable For The RCE Backlog

As I was cleaning up my office a few weeks ago, I came across a December 2009 article I wrote with my colleague Steve Reid for BNA’s Patent, Trademark & Copyright Journal, entitled “New Patent Office Examination Procedures: Bane or Boon?” The article discusses the then-new changes to the USPTO’s internal procedures for examining applications … Continue reading this entry

USPTO Announces QPIDS Pilot Program For Post-Issue Fee Information Disclosure Statements

The USPTO has announced a new pilot program to permit Applicants to obtain consideration of certain Information Disclosure Statements (IDSs) after the Issue Fee has been paid without having to reopen prosecution. The “Quick Path Information Disclosure Statement (QPIDS) Pilot Program” takes effect May 16, 2012 and will run through September 30, 2012 unless it … Continue reading this entry

The Rhyme & Reason Behind The USPTO's Proposed Patent Fees

On Wednesday, February 15, 2012, the Patent Public Advisory Committee (PPAC) will hold its first public hearing on the patent fees that the USPTO proposes to charge in accordance with its new fee-setting authority conferred by the America Invents Act. In advance of this meeting, the USPTO released several documents outlining and explaining the proposed … Continue reading this entry

USPTO Opens Track I Expedited Examination To RCEs

In today’s Federal Register Notice, the USPTO announces the expansion of its Track I program for fee-based expedited examination to include Requests for Continued Examination (RCEs). While this may be good news on a practical level, it exacts a high price to obtain prompt review of an application that already is midstream in the examination process. … Continue reading this entry

USPTO Says Status Inquiry Triggers Patent Term Adjustment Deduction

Despite statistics on the USPTO’s Patents Dashboard indicating that the average time from a Request for Continued Examination (RCE) to the next Office Action is 3.8 months, I continue to experience much more significant delays of 9-12 months or longer. When I telephone examiners to check on the status of my applications, they are sympathetic … Continue reading this entry

USPTO Backlog Update: One Step Forward, One Step Back

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 … Continue reading this entry