USPTO Provides RCE Outreach Progress Update

by McDonnell Boehnen Hulbert & Berghoff LLP

USPTO SealAt last month's Patent Public Advisory Committee (PPAC) meeting, the U.S. Patent and Trademark Office provided a progress update on the RCE Outreach program that was initiated last December with the Office's request for comments on RCE practice (see "USPTO Seeks Public Feedback on RCE Practice").  The Office subsequently extended the deadline in February (see "USPTO Extends Comments Deadline, Will Hold Roundtables on RCE Practice").  While the RCE backlog numbered more than 103,000 at the time the deadline was extended, the backlog has now dropped to just over 98,000 (see Patent Dashboard).

In the Office's PPAC presentation, which was given by the Deputy Commissioner for Patent Operations, Andrew Faile, and the Director of the Central Reexamination Unit, Remy Yucel, the Office indicated that more than 1,100 comments had been received via the RCE Outreach program.  In reviewing those comments, the Office noted that several themes emerged.

The first theme concerned the need for greater educational outreach, with the Office pointing to a general lack of awareness and understanding of existing initiatives for reducing the need for future RCE filings.  The Office suggested that a sustained awareness of all available options may obviate the need to file some RCEs.

The second theme concerned IDS consideration, with the Office indicating that the need to have an IDS considered post-allowance drives the filing of a significant number of RCEs.  The Office's presentation notes that the Quick Path Information Disclosure Statement (QPIDS) Pilot Program provides relief in certain instances (see "USPTO Announces Quick Path Information Disclosure Statement (QPIDS) Pilot Program").  Because the QPIDS program only addresses references from a foreign filing, the Office noted that the approach could be expanded to allow for certification under 37 C.F.R. 1.97(e) for information from a domestic filing.

The third theme concerned training, with commenters pointing to issues with examination quality and supervisory involvement.  The Office noted that a potential approach for addressing this issue would be to provide advanced training for supervisors and examiners regarding after final practice and compact prosecution, how to effectively review a case, and how to better identify and relate allowable subject matter.

The fourth theme concerned prosecution flexibility, with the Office noting that the prosecution timeline may not provide enough time, in some cases, to clarify issues before final status is reached.  The Office suggested that more opportunities for interaction between the examiner and applicant's representative could lead to a reduction in RCE filings.  In addition, the Office proposed the possibility of providing a PCT-style search report before the first action to help applicants determine the claim set to pursue during examination.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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