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Monday Jul 26, 2010

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).

Comments:

Thank you for providing recent statistics on RCE filings. It would be interesting to see USPTO statistics on the average time to first action after an RCE under the new docketing procedures, as compared to the same period in FY09 and FY09 as a whole. Would it be possible to prioritize RCEs that are filed after an interview? I discuss the particular frustrations of post-interview, post-RCE delays in a recent blog article: http://www.pharmapatentsblog.com/new-rce-docketing-delays-examination/

Posted by Courtenay Brinckerhoff on July 26, 2010 at 12:04 PM EDT #

Here are a couple things that could cut RCE's. (1) Answer all material traversed, as requred by 5 USC s 555. Always, no exceptions. Not "The Examiner respectfully disagrees" with no explanation, but a real answer that moves the case forward. (2) Implement the President's Bulletin for Agency Good Guidance Practices, http://www.whitehouse.gov/omb/memoranda/fy2007/m07-07.pdf If the PTO implemented these two policies, cases would continue to progress instead of bogging down. The RCE and Appeal rates at our firm would fall by 2/3 almost instantly.

Posted by David Boundy on July 26, 2010 at 02:40 PM EDT #

If an amendment filed after a final rejection overcomes the cited prior art, but the Examiner believes additional searching is required (as they usually say), the amendment should be entered and examined without the need for filing an RCE. This could be done by removing the finality of the rejection or by doing the search prior to issuing an Advisory Action. In many of these cases, the relevant prior art should have been identified in the past searches and a review of the non-cited prior art is all that is needed. However, it is easier for the Examiner to refuse to enter the amendment, making an RCE necessary, than to do the search in the limited time for preparing an Advisory Action.

Posted by Scott Cleere on July 29, 2010 at 11:17 AM EDT #

One problem with the new RCE practice is that if an RCE is filed after final based on an Examiner's suggestion for claim language, it can take over a year before the Examiner decides to pick up the case.

Posted by 10.240.6.54 on July 30, 2010 at 10:48 AM EDT #

The primary reason for RCEs that I see are bad rejections that are maintained on final despite the errors being pointed out. These are often miraculously withdrawn when the same errors are pointed out and an RCE is filed. The primary cause of RCEs is poor quality examination - something that the USPTO has not adequately addressed, particularly in the biological sciences. The doubling of "RCE inventory" suggests that the recent changes to RCE practice have hardly been helpful to the Office's customers.

Posted by J. Smith on August 01, 2010 at 02:01 AM EDT #

I also observe a major decrease in the quality of Office Actions - much less careful consideration of claim language, actual content of references. and the legal step-by-step set out in the MPEP. Examiners wing it far more often than 10 years ago. Two possible contributors: (a) the IFW. Before 2003, examiners had to type claims, with the IFW they don't. I think (I can't know, but it sure seems to be the case) that this reduces the opportunity for careful thought. (b) PG Pubs with paragraph numbers instead of column and line numbers. When an examiner only has to cite a paragraph number instead of a column, line number, and reference number, the care of analysis falls. I recommend switching PG pubs back to column and line number - that would cost nothing, and lead to better examination.

Posted by David Boundy on August 01, 2010 at 07:24 PM EDT #

Many examiners are highly competent, and most RCEs are necessary steps toward resolving honest disagreements about the prior art or the scope of claims. However, a significant fraction of unnecessary RCEs could be eliminated if only there were an effective program to discipline and re-educate (or just terminate) those few examiners who consistently do a sloppy, blatantly hasty job on each and every case before them. All practitioners know of the OED, and that knowledge presumably helps to rein-in impulses toward egregious behavior in prosecution. Where is the equivalent office for examiners? Are examiners aware that such an office exists? How can practitioners contact that office? Even more important, where is the "corps" mentality that would make the many good examiners feel some obligation to get rid of the lazy count-gamers?

Posted by examiner performance on August 13, 2010 at 11:34 AM EDT #

A possible source of unnecessary RCEs is in the context of submitting an IDS in a case where the issue fee has been paid yet later re-opened based on citing new art or a new OA in a related (e.g., via family, subject matter) second case. The art/OA may have little to no relevance to the allowed claims, or the Examiner may have already previously reviewed it off record. Yet, in view of McKesson and recent inequitable conduct cases, and despite the obligation imposed by Rule 1.56 to disclose information merely material to patentability, many attorneys are reluctant to make an evaluation of the art/OA for materiality in favor of the conservative approach of simply citing everything that comes their way and let the PTO decide. It would be interesting to see a statistic from the PTO of how many post-issue fee payment RCEs are filed. A quick solution may be to make the cut-off date for citation in an IDS based on citations in a related case the date of the issue fee payment.

Posted by Dave Rodack on September 28, 2010 at 07:05 AM EDT #

Great to hear it from the source what the reasons and ramifications are..

Posted by HPS Grow Lights on January 01, 2011 at 08:00 PM EST #

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