RCE Filings: The Facts
Special Guest Blog by Commissioner for Patents Bob Stoll
To address recent inquires as to whether RCE filings at the USPTO are rising, I asked the Patents team to look into it. Interestingly, it turns out that overall average RCE filing rates have not changed significantly and unfortunately, some of the RCE information circulating publicly is incorrect. To set the record straight, here are the latest figures: in FY 10, 114,183 RCE applications have been filed through July 12, 2010. This represents 31.2% of total UPR (Utility, Plant, and Reissue application) filings. When compared with 110,183 filings over the same period in FY09 and 138,459 filings for all of FY09, it is apparent that the average RCE filing rate has remained fairly constant.
Nevertheless, we share the desire of the applicant community to see the rate decline. Let’s take a look at why the RCE filing rate may be remaining high and explore whether we should be taking further steps to help both applicants and examiners avoid unnecessary RCE filings.
When we redesigned the examiner count system, we indicated that our primary objectives were to improve examination quality and encourage compact prosecution. We also indicated that we intended the improved count system to reduce any incentive our examiners may have to unnecessarily promote RCE practice. But we realized then, as we do now, that there continue to be many reasons why applicants file RCEs. As such, we will continue to treat RCEs as a valuable tool in the patent prosecution process.
In recent months we have instituted many changes designed to better facilitate compact prosecution. These include early interviews, training, count system reform and significant revisions to the SPE performance appraisal plans. With these, we are starting to make progress towards lowering the backlog and reducing patent pendency, despite continued funding and hiring challenges. One great example of our progress is that actions per disposal are down substantially - from over 2.9 in FY 2008-2009 to currently under 2.4. Productivity in July is up by 3.5 percent over the same time last year--386,147 total PUs (production units*) versus 373,170 PUs. Allowances have increased from 136,228 last year at this time to 178,322 this year. And final rejections are up too, with 203,206 final rejections so far this year, compared to 189,202 for the same period in FY09. Interviews, too, are projected to increase by about 60 percent from last year.
As planned when the new count system was launched, we are placing less emphasis on rapid office response to multiple RCE filings by applicants. As expected, in some cases this is not affecting applicants who use RCE practice. There were 26 art units whose RCE backlog actually decreased between November 2009 and June 30 of this year. In other areas, however, examiner RCE dockets are lengthening. Overall, our RCE inventory has gone from 17,209 as of July 1, 2009, to 35,569 as of July 1, 2010.
We are asking examiners to do their part to enable applicants to get applications prosecuted promptly and to avoid unnecessary RCE practice. It is important that applicants do their part as well. There are many valid reasons for filing RCEs – for example, claim amendments after final that are too substantial for examination under after-final practice. Applicants will be pleased to know that we are working on improvements to 116 practice that should obviate the need for some RCE filings. More information will be coming about these improvements in the months ahead.
But there are also reasons for filing RCE’s that are less consistent with the shared goal of compact prosecution and reduction of the USPTO backlog. These include, for example, presenting new claims not included in the original application, or continuing to prosecute broad claims that were rejected in the original case. To put them at the front of the line each time such applicants file an RCE is detrimental to achieving our shared goal. And it's not fair to other applicants who do all the necessary work up front to enable compact prosecution. Furthermore, many applicants using multiple RCE practice actually do not want to be put at the front of the line because they are using RCEs to gain, in effect, an extension of time through slower processing. And, while this practice is permissible, there is no reason for the Office to frustrate these applicants by prioritizing further action on their cases. In any event, all of these scenarios have the effect of lengthening the RCE docket.
We will continue to watch examiners' RCE dockets closely, and will certainly consider further improvements to RCE practice. We'd like to hear from applicants regarding other reasons for RCE filings. We would also like your input on other potential changes in practice, by applicants or by the USPTO, that would minimize the need for RCE filings. For example, should the RCE filing fee be increased to more closely align it with the USPTO’s actual cost to continue prosecution? We look forward to hearing from you.
* A production unit is a measure of examiner productivity. The number of production units obtained over a given period are equal to the sum of the number of first actions (A) and disposals (B) divided by two (i.e., [A+B] /2 = 1 PU).