The USPTO is seeking public comments on Request for Continued Examination (RCE) practice. In particular, the USPTO is “soliciting public feedback in an effort to better understand the full spectrum of factors that impact the decision to file an RCE.” The USPTO tends to have a negative view of RCEs, so this is an important opportunity to explain how and why RCEs can be a legitimate step in the patent examination process, and how certain USPTO examination practices can contribute to the need for an RCE. The USPTO will consider written comments received by February 4, 2013

The RCE Backlog

The USPTO no longer can ignore the growing problem of the RCE backlog. As I wrote recently, the inventory of post-RCE applications awaiting examination has been growing steadily, and has reached over 90,000 cases. Examination delays for RCE applications also are growing, and the average delay from an RCE to the next Office Action is the highest it has ever been (at 5.6 months as of August 2012) and has been climbing steadily for the past two years. (Anecdotally, it is not unusual for RCEs to experience delays of one year or longer, depending on the technology center and examiner workload.) While the USPTO views the problem in terms of  ”resources [that are diverted] away from the examination of new applications,” I see the problem in terms of applicants who are being denied timely examination of their applications and grant of their patents.

The USPTO’s Data

The Federal Register Notice includes a link to the USPTO’s RCE Outreach webpage. Linked to this page is a summary of various RCE statistics, “including the fraction of applications (by technology classification) containing at least one RCE, and the fraction of applications (out of a random sample) in which no submission under 37 CFR 1.116 was filed prior to the filing of the RCE.” I find those sets of data interesting.

The USPTO data show that the number of applications with RCEs is relatively uniform across Technology Centers. Those statistics demonstrate that the RCE problem is not limited to specific technologies, and belie the theories that focus on pharmaceutical patents, and that assume that applicants welcome (or even seek) the examination delays that are associated with RCEs.

The USPTO also show that most applicants do not file an after-final response before filing an RCE. The USPTO assumes that 25% of those RCEs may not have been necessary, but applicants who filed RCEs may be familiar with the after-final practices of the examiners, and may have known that their after-final responses would not have been entered. In my practice, I often file an after-final response even if I expect it to not be entered, to avoid receiving another final Office Action as the first Action after the RCE. (I urged the USPTO to abolish the rule that permits such examination churning tactics in this article.)

The USPTO’s Questions

The USPTO’s questions in this Federal Register Notice focus on the reasons why applicants file RCEs:

  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?

Submitting Written Comments 

The Federal Register Notice offers several ways to submit written comments on RCE practice:

United States Patent and Trademark Office

Mail Stop Comments–Patents

Office of Commissioner for Patents

P.O. Box 1450

Alexandria, VA 22313-1450

Attention: Raul Tamayo

The Federal Register Notice also states that the USPTO is planning “to conduct roundtables to obtain input from diverse organizations and individuals on RCE practice.”

An Important Opportunity

I am glad that the USPTO is addressing the RCE problem, and encourage all stakeholders to submit written comments and explain why they often need to file RCEs. I hope that the comments balance the USPTO’s negative view of RCEs, and show that RCEs often are required during a normal examination process. I also hope that the USPTO understands that USPTO examination practices contribute to the need for RCEs at least as much as applicant prosecution practices.