[author: Courtenay C. Brinckerhoff]
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 after a Request for Continued Examination (RCE) has been filed. We predicted that the changes “could introduce significant delays in prosecution,” and the statistics recently reported on Patently-O confirm that we were right. The problem is growing and reaching a crisis—I have RCE applications that have been waiting over a year for examination. How do we hold the USPTO accountable for the growing RCE backlog?
The Application Shell Game
While the USPTO has been focusing its efforts—and touting its successes— on reducing the backlog of new patent applications awaiting examination, the number of RCE applications awaiting continued examination has ballooned. Indeed, the data reported on Patently-O show that while the new application backlog decreased by 64,000 from March 2011 to March 2012, the RCE backlog increased by 22,144 and the appeal backlog increased by 5,280. Issuing more first Office Actions without completing examination of pending applications is nothing but a shell game—shifting the stack of in-process applications from one category to another.
USPTO Policies Discourage Examination Of RCEs
The rise in the RCE backlog is not just the result of the increased attention given to new applications. USPTO policies actually discourage examiners from working on RCEs. Specifically, the USPTO’s current docketing procedures and count system treat RCEs worse than both brand new applications and new continuation and divisional applications.
As explained in our Patent, Trademark & Copyright Journal article, RCEs, continuation applications and divisional applications are placed on an examiner’s “special new” docket. An examiner must examine just one application from this docket—usually the one with the oldest priority date—every other biweek, i.e., about one per month. Moreover, an examiner gets less credit towards his or her production goals for issuing an Office Action in an RCE than for issuing an Office Action in a continuation or divisional application. This system gives examiners no incentive to work on an RCE. Indeed, one examiner suggested that we file a continuation application instead of an RCE, to make it more likely that examination would proceed in a more timely manner.
Shirking Its Statutory Obligation
The USPTO’s current policies and procedures shirk its statutory obligation “to provide for the continued examination of applications . . . at the request of the applicant,” as 35 USC § 132(b) requires. Making an RCE wait longer for an Office Action than a new continuation application is not “continuing” examination. Putting an application on hold for months or years is not “continuing” examination. Permitting an examiner to delay examination of an RCE application until he or she has forgotten the invention, the prior art, the rejections and the applicants’ explanations is not “continuing” examination.
By focusing on the front-end of the examination process without considering the process as a whole, the USPTO may have lost sight of the fact that applicants do not want an Office Action, they want a patent. Indeed, applicants need granted patents in order to enforce their rights, secure investments, and improve their value. As I wrote previously, 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. It is time for stakeholders to hold the USPTO accountable for the RCE backlog and demand that RCEs be examined in a timely manner.