USPTO Seeks Public Feedback on RCE Practice

by McDonnell Boehnen Hulbert & Berghoff LLP

USPTO SealLast week, 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 indicates that the Office currently has a backlog of more than 90,000 applications that have not been examined since an RCE was filed, and states that this backlog diverts Office resources from the examination of new applications.  While the Office notes that several programs have been implemented to reduce the need to file an RCE, and thereby reduce the RCE backlog, the Office is now turning to its stakeholders "in an effort to better understand the full spectrum of factors that impact the decision to file an RCE."  The Office plans to use the information it gathers to design additional programs and initiatives aimed at reducing RCE filings and the RCE backlog.

The Office describes some of its efforts to reduce the RCE backlog in the notice, pointing to the Quick Path Information Disclosure Statement (QPIDS) pilot program and the After Final Consideration Pilot (AFCP) as two examples (see "USPTO Announces Quick Path Information Disclosure Statement (QPIDS) Pilot Program"; "USPTO to Assess After Final Consideration Pilot Program"; and "USPTO News Briefs," June 21, 2012).  The notice does not, however, discuss the Office's efforts to decrease RCE filings by raising the cost of filing a first RCE to $1,200 (from the current fee of $930), and further raise the cost of filing subsequent RCEs to $1,700 (see "More on USPTO's Proposed New Fees - Part II"), a proposal that the Patent Public Advisory Committee (PPAC) has called "illogical" (see "PPAC Issues Report on USPTO Patent Fees Proposal").  On the topic of RCE filings, PPAC has previously explained that:

[A]pplicants rely on RCEs to continue the prosecution and eventually (and justly) receive a patent on their invention.  RCEs are mostly filed by applicants genuinely attempting to move prosecution forward and get a patent and not generally, it is believed, simply to delay the prosecution (applicants have the ability to file further continuation applications to proceed with other claim sets or to keep a particular patent family in prosecution in any case).  RCEs are a source of frustration for both the Office and the applicants, with both parties contributing to the problem.  However, from both casual conversation and also in public statements, the USPTO seems to place the blame for the rapid growth in RCE applications solely and squarely on applicants.  The change several years ago to move RCEs to the special new case docket (rather than an examiner’s amended docket) causes (as one would expect) significant delays in acting on RCEs.  That the Office has proposed significant increases in the RCE fees adds salt to an existing wound:  applicants must pay more for what most perceive as a reduction in service.  Thus, the proposed increase in fees for RCEs was not well received by the public.

Noting that "[t]he USPTO acknowledges that the cost of completing an RCE is less than that required for an original utility application," PPAC has also contended that "the increased costs to applicant being proposed to treat an RCE (and particularly a second and subsequent RCE) compared to the fees proposed for a utility or continuation application seems illogical."  Instead, PPAC has suggested that:

[A] small increase in the fee for an RCE might be appropriate but it should align more closely to the associated required work, and certainly be less than the fees for new or continuation applications.  The higher fee for second and subsequent RCEs should be eliminated because these become easier and cheaper to examine and any number of continuations may be filed at the same cost per continuation.  Rather than punishing applicants for pursuing their inventions by filing an RCE, it is suggested that the USPTO continue to find ways to reduce applicants' need for the RCEs in the first place.

The Office's request for comments on RCE practice also notes that a webpage devoted to its efforts to decrease the RCE backlog has been created on the USPTO website.  Data regarding RCE filings can be found at this webpage, including a chart showing the rise in the RCE backlog from just under 20,000 RCE filings awaiting an Office action in the fourth quarter of fiscal year (FY) 2009 to the current level of nearly 100,000.

RCE Backlog
The Office also provides data on RCE filings by technology, noting that the fraction of applications containing RCE filings is generally the same across technologies.

RCE by Technology
According to the notice, the public can provide feedback regarding RCE practice 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 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.  Comments must be submitted by February 4, 2013.  The Office also plant to hold a series of roundtables on RCE practice.

The notice provides a series of questions on which the Office is particularly 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?


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McDonnell Boehnen Hulbert & Berghoff LLP

McDonnell Boehnen Hulbert & Berghoff LLP on:

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