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Tuesday Feb 12, 2013

Wanted: Your Ideas and Feedback About "RCEs"

Blog by Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO Teresa Stanek Rea

During the last few years the USPTO has developed and implemented many significant changes to enhance the quality and efficiency of the examination process. We understand that resolving issues as early as possible during prosecution benefits applicants and the public. At the same time, we recognize that many inventions presented to the office are becoming increasingly complex, and may require more prosecution steps to complete a thorough and robust examination. Filing a Request for Continued Examination (RCE) is one of several tools available for stakeholders to resolve issues.

The USPTO currently has a backlog of applications awaiting examination after an RCE has been filed, and we’re actively pursuing efforts to address this backlog. But as we’re doing that, we’re also testing initiatives that may reduce the number of RCEs that need to be filed. For example, the office has initiated two pilots—the After Final Consideration Pilot (AFCP) and the Quick Path IDS (QPIDS) pilot—designed to obviate the need to file some RCEs. The AFCP provides a limited amount of time for an examiner to give more consideration to submissions made under 37 CFR 1.116. The QPIDS pilot is intended to reduce pendency and applicant costs when an information disclosure statement (IDS) is filed after payment of the issue fee. To date about 600 RCEs have been avoided due to the QPIDS pilot. Both pilots are currently set to end on March 23, 2013.
To further assist and help shape future RCE backlog reduction efforts, we want to learn more about the root causes for RCE filings and related pressure points experienced by our stakeholder community. In close collaboration with our Patent Public Advisory Committee (PPAC), we recently initiated an RCE Outreach program which seeks to gather input from stakeholders about RCEs. The purpose of this effort is not to eliminate RCE practice or in any way disadvantage it, but rather enable applicants to use RCE practice when needed and avoid it when equal or better options may be available. The RCE Outreach program Web page has a wealth of data about RCE filing and prosecution behaviors, an online collaboration tool for submitting comments, and a series of questions about RCE practice. I invite you to become part of the conversation and future solutions. The RCE Outreach initiative will also feature a series of roundtables and smaller focus sessions in Silicon Valley, Dallas, New York, Chicago, and at USPTO headquarters in Alexandria, Va. As they become available, the details on how to participate will be listed on our RCE Outreach Web page.


Although I am fairly new, from speaking with other examiners and also seeing the first set of claims from applicants, there is evidence that the applicants plan to go through at least one RCE, especially the larger coorperations ie verizon, comcast, microsoft. There seems to be a trend to claim very broad with missleading verbiage on the first sets of claims. Also from an examiner perspective, if we have more help with the amendments I think it would be much more possible to transition more attention into limiting RCE's the best we can.

Posted by Tariq Gbond on February 13, 2013 at 05:56 AM EST #

1st RCE goes on Examiner's Amended Docket (must move in 28 days, like they were a couple years back) and Examiner is credited 1.25 counts for First-Action - 2nd and subsequent RCEs sit on Continuing New Docket like they are now

Posted by Scott Zare on February 14, 2013 at 05:34 AM EST #

I suspect one huge reason for the increase in RCE filings is the time it takes to get an appeal heard at PTAB. Since we give applicants multiple ways to proceed after a final rejection, if one backs up another will start to become more popular.

Posted by Scott Anderson on February 14, 2013 at 11:19 AM EST #

I saw a suggestion that I like on the FB page. For the first RCE, have an expedited docket to keep prosecution moving. I have two applications where the Examiner and my clients have agreed to allowable language but needed to file an RCE to have the amendments considered. Now, we are waiting an extended period essentially to receive a Notice of Allowance. In one case, it has been well over two years. The Examiner claims that his hands are tied by his docket so he cannot consider the application or enter an Examiner's amendment! I would think moving these cases along would be a priority to reduce backlog. Thus, please have some provision for quick review of cases that are in condition for allowance, but were filed as RCEs to have the amendments considered.

Posted by William Nixon on February 15, 2013 at 05:29 AM EST #

I think a contributing factor may be the way in which the oldest applications are selected for DM credit on the CON docket. If no RCEs are in the top three, it would appear that working RCEs out of turn provides no DM credit. Perhaps offering a zero day count for RCEs would help in moving them out. On the other hand a COPA like (maybe CORA for clearing out RCE applications) corps wide bonus and program could also assist in moving them promptly.

Posted by Fritz Fleming on February 15, 2013 at 08:47 AM EST #

I see RCEs coming from two domains: a) chilling legislation such as McKesson v Bridge and b) gamesmanship in claim breadth. For the former, I might suggest that the USPTO provide a press release interpreting cases such as McKesson and assuring applicants that we have systems the already notify examiners on US copending applications. To be safe Applicant's can signal in the ADS of copending apps further alerting the examiner to be diligent to review copending information. On the latter, we need to develop a "score" that we introduce in the first office action that indicates to applicant the breadth of his claims. Lower scores would be highly correlated to a higher probability of RCE. Higher scores - highly correlated with optimal compact prosecution. Happy to provide feedback to make either point operational.

Posted by Paul D'Agostino on February 19, 2013 at 06:46 AM EST #

RCEs currently go on the "Continuing New" docket. Say I allow a case. Next week, applicant files a continuation. It goes on my "Continuing New" docket along with the RCEs. But because that continuation case may claim priority to an old parent case, it floats to the top of the docket. The RCEs just sit there and get pushed down the stack. Since we are incented to work on new cases, and only the very oldest of those on the "Continuing New" docket, the RCEs just sit there and don't get worked on at all. It seems to me that a continuation case, being a NEW case, after all, should not be prioritized over an existing case like an RCE. Perhaps RCEs should have their own docket with a separate docket management prioritization. Or the "Continuing New" docket should be prioritized by filing date of the RCE / CON case itself, instead of the filing date of the parent. That way, first in, first out. Right now, its kind of last in, first out.

Posted by Larry Sternbane on February 21, 2013 at 03:21 AM EST #

Currently, there is no DM credit for working on RCE. To reduce the backlog in RCE cases, advise the applicant not file an RCE after final but file as a continuation. In this way, we can reduce the RCE backlog and RCE now filed as continuation will get priority under the current DM system.

Posted by Tom Duong on February 26, 2013 at 02:13 PM EST #

I understand that some companies are starting to institute a policy whereby they file an RCE after receiving a Notice of Allowance, stripping out elements from the claims without comment about the references or the previous references and rejections by the Examiner. Lazy Examiner's in turn are allowing these cases with almost no review. What is going on here? When an Applicant files an RCE after a Notice of Allowance for reasons other than filing an IDS, are they hoodwinking the Examiner whose eye is not on the ball at this stage of the prosecution? IT is clear the level of scrutiny diops to almost zero when an RCE is filed after allowance, and the USPTO must not allow Applicants to merely strip elements or broaden without specific comment as to why the previous rejection is not applicable to the new version of the claims.

Posted by JohnQpractitioner on March 05, 2013 at 12:26 PM EST #

From a practitioner perspective, a big driver of the first RCE is that the second office action is almost always made final. When a first response presents amendments and arguments, the examiner should not automatically be able to make the rejection final on based new art. Doing so forces applicant to file an RCE if amendments are necessary to address the newly presented rejections. One solution in such cases would be to provide applicant with the option for an after-final interview and a follow-up response (i.e., the interview serves to withdraw finality of the office action) as an alternative to filing an RCE. This would allow an applicant to expeditiously advance the application toward allowance and would also enable the examiner to get counts for an interview to compensate for the lost counts from no RCE.

Posted by Corp Counsel on March 13, 2013 at 06:56 AM EDT #

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