USPTO Extends Comments Deadline, Will Hold Roundtables on RCE Practice

by McDonnell Boehnen Hulbert & Berghoff LLP

USPTO SealIn December, the U.S. Patent and Trademark Office published a notice in the Federal Register (77 Fed. Reg. 72830) seeking public feedback on Request for Continued Examination (RCE) practice.  The notice provided a series of questions for which the Office specifically was seeking comment:

(1) If within your practice you file a higher or lower number of RCEs for certain clients or areas of technology as compared to others, what factor(s) can you identify for the difference in filings?

(2) What change(s), if any, in Office procedure(s) or regulation(s) would reduce your need to file RCEs?

(3) What effect(s), if any, does the Office’s interview practice have on your decision to file an RCE?

(4) If, on average, interviews with examiners lead you to file fewer RCEs, at what point during prosecution do interviews most regularly produce this effect?

(5) What actions could be taken by either the Office or applicants to reduce the need to file evidence (not including an IDS) after a final rejection?

(6) When considering how to respond to a final rejection, what factor(s) cause you to favor the filing of an RCE?

(7) When considering how to respond to a final rejection, what factor(s) cause you to favor the filing of an amendment after final (37 CFR 1.116)?

(8) Was your after final practice impacted by the Office’s change to the order of examination of RCEs in November 2009? If so, how?

(9) How does client preference drive your decision to file an RCE or other response after final?

(10) What strategy/strategies do you employ to avoid RCEs?

(11) Do you have other reasons for filing an RCE that you would like to share?

According to the notice, feedback regarding RCE practice could be provided by submitting written comments by e-mail to; by regular mail to the United States Patent and Trademark Office, Mail Stop Comments -- Patents, Office of Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of Raul Tamayo; or by using the web-based collaboration tool IdeaScale®, which allows users to post comments, view and respond to others' comments, and indicate agreement or disagreement with particular comments.  At the time the notice was published, the deadline of submitting comments was February 4, 2013.  However, as indicated on the Office's RCE Outreach webpage, the deadline for submitting comments has now been extended to March 11, 2013.

In addition to requesting comments on RCE practice, the notice also indicated that the Office would be holding five roundtables on the topic.  The dates and locations of the roundtables have now been announced:

• February 20 -- Santa Clara University School of Law, Santa Clara, CA -- Roundtable from 9:00 to 11:00 am (PT) and focus session from 2:00 to 4:00 pm (PT)

• February 26 -- Southern Methodist University, Dedman School of Law, Dallas, TX -- Roundtable from 9:00 to 11:00 am (CT) and focus session from 2:00 to 4:00 pm (CT)

• February 28 -- New York University School of Law, New York, NY -- Roundtable from 9:00 to 11:00 am (ET) and focus session from 2:00 to 4:00 pm (ET)

• March 6 -- USPTO Headquarters, Alexandria, VA -- Roundtable from 9:00 to 11:00 am (ET) and focus session from 2:00 to 4:00 pm (ET)

• March 8 -- Chicago-Kent College of Law, Chicago, IL -- Roundtable from 9:00 to 11:00 am (CT) and focus session from 2:00 to 4:00 pm (CT)

The RCE Outreach webpage includes an invitation to participate in the roundtable and focus sessions on RCE practice.  According to the invitation, the Office's current analysis of RCE practice is aimed at "learn[ing] more about the root causes for RCE filings as a basis for the consideration and design of procedural modifications and educational initiatives to promote compact prosecution."  The Office notes that "[t]he purpose of this effort is not to eliminate RCE practice, or in any way disadvantage it, [b]ut rather, the purpose is to enable applicants to use RCE practice when needed, while avoiding it where equal or better options are available."  The roundtable/focus session portion of the RCE Outreach program consists of a series of roundtable discussions (of 75-100 people) and focus sessions (of 10-15 people) to "share ideas, feedback, experiences, and insights on RCE related prosecution strategies."

Those interested in participating in any of the roundtables or focus sessions can register by sending an e-mail message to and providing the following information:  (1) Your name, title, and if applicable, company or organization, address, phone number, and e-mail address; (2) which event you wish to attend; (3) which session you wish to attend (i.e., roundtable and/or focus session); and (4) if you wish to make an oral presentation at the roundtable, the specific topic or issue to be addressed and the approximate desired length of your presentation.  Registration for the roundtables/focus sessions is requested by the following dates:  Santa Clara, CA -- February 15; Dallas, TX -- February 22; New York, NY --February 22; Alexandria, VA -- March 1; Chicago, IL -- March 1.

Although the Office has implemented several programs aimed at reducing the RCE backlog (which currently numbers more than 103,000; see Patents Dashboard), the Office's request for comments and its announcement of roundtables/focus sessions on the topic suggests that the Office may now be turning to its stakeholders for ways to decrease the RCE backlog.  Of course, the Office's efforts to decrease the backlog by raising the cost of filing a first RCE to $1,200, and further raising the cost of filing subsequent RCEs to $1,700 (see "USPTO Publishes Final Rule Setting Patent Fees"), despite the fact that the Patent Public Advisory Committee (PPAC) called such fees "illogical" (see "PPAC Issues Report on USPTO Patent Fees Proposal"), might leave some stakeholders with doubts.

Additional information regarding the Office's efforts to address the RCE backlog can be found on the RCE Outreach webpage and in the Office's Federal Register notice (see also "USPTO Seeks Public Feedback on RCE Practice").


Written by:

McDonnell Boehnen Hulbert & Berghoff LLP

McDonnell Boehnen Hulbert & Berghoff LLP on:

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