As you may be aware, there is a growing number of unexamined Requests for Continued Examination (RCEs) clogging the Patent Office docket. In fact, as of the end of Fiscal Year 2012, there were 95,200 RCEs that were awaiting examiner consideration, which is almost double the 48,680 that were awaiting examiner action at the start of Fiscal Year 2011.
The USPTO is concerned about the RCE backlog and the agency, in collaboration with the Patent Public Advisory Committee (PPAC), will host a series of public roundtables to solicit stakeholder input on ways the agency can reduce the number of Request for Continued Examination (RCE) filings.
The initiative is part of the USPTO’s effort to reduce patent application pendency. In order to accomplish this, the USPTO is seeking to better understand the root causes for filing RCEs and plans to use the information gathered during the public events to design additional programs and initiatives aimed at reducing RCE filings and backlog.
The dates and locations of the events, which include both roundtable sessions and focus sessions scheduled are found below. For information on participating in or attending either the roundtable presentations or focus sessions, please see USPTO Invitation to Participate.
- February 20 – Santa Clara University School of Law, Santa Clara, Calif. – Roundtable from 9 – 11 a.m. PT and focus session from 2 – 4 p.m. PT
- February 26 – Southern Methodist University, Dedman School of Law, Dallas, Texas – Roundtable from 9 – 11 a.m. CT and focus session from 2 – 4 p.m. CT
- February 28 – New York University School of Law, New York, N.Y. – Roundtable from 9 – 11 a.m. ET and focus session from 2 – 4 p.m. ET
- March 6 – USPTO Headquarters, Alexandria, Va. – Roundtable from 9 – 11 a.m. ET and focus session from 2 – 4 p.m. ET
- March 8 – Chicago-Kent College of Law, Chicago, Ill. – Roundtable from 9 – 11 a.m. CT and focus session from 2 – 4 p.m. CT
According to the USPTO, the roundtable sessions will accommodate 75-100 people, while the focus sessions will be a smaller group of 10-15. The focus sessions will seek to address the following eleven questions:
(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 USPTO procedure(s) or regulation(s) would reduce your need to file RCEs?
(3) What effect(s), if any, does the USPTO’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 USPTO 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?
The answer seems to be relatively simple. RCEs should be addressed more quickly by examiners. The dramatic growth in RCEs coincides with the Office’s decision to limit examiner’s ability to pick up only 1 RCE every other bi-week. That lead from average RCE wait of approximately 2 to 3 months to the wait in some technology areas being now 2 to 4 years.
Hopefully, the Patent Office will get the RCE backlog sorted out sooner rather than later.