The United States Patent and Trademark Office (USPTO) has made great strides over the last several years, there is no doubt about it, but there is still work to be done. The patent system was collapsing under the crushing weight of an ever increasing demand for U.S. patents, antiquated computer systems and policies that lead to second guessing every allowance. This crippled the Patent Office. The Patent Office is better today than it was at the end of the Bush era, but the USPTO has a problem; a very big problem.
At the end of a patent application proceeding (a process known as “prosecution”) there are a number of possible outcomes. A patent can be granted on all of the claims sought, which is rare but not unprecedented. See Patent Bigfoot: The Mythical First Action Allowances. The applicant can give up and not respond to a final rejection for one reason or another, perhaps because the patent examiner has found strong prior art that will be difficult to overcome. Still further, allowed claims can be accepted, rejected claims canceled and a patent issue. In this last scenario the patent application can pay the issue fee, accept the patent and file a continuation or continuation-in-part pursuant to 37 CFR 1.53(b) in order to seek other claims on the disclosure.
But what if the patent prosecution results in no claims allowed? In this scenario, which is unfortunately far more common than either the patent bar or Patent Office would like, the procedural vehicle of choice is a Request for Continued Examination (RCE) under 37 CFR 1.114. An RCE can be filed in situations where claims are allowed, but they are far more common in the scenario where all claims are rejected because with an RCE, which is not considered a new patent application and will have the same serial number as the previous application, all claims go back into prosecution. That means both allowed claims and rejected claims are back on the table during prosecution. That can be dangerous when claims are allowed because patent examiners are known to reject previously allowed claims in an RCE.
The intricacies of RCE practice go beyond the scope of this article, but it is RCE practice that is the aforementioned problem facing the USPTO. They are problematic because the number of RCE filings has grown at an alarming rate in recent years. As the USPTO has worked hard to address the backlog of unexamined patent applications (UPA on the table below) the number of RCE filings that remain untouched has nearly doubled.
The backlog of unexamined patent applications was down over 15.1% in September 2012, compared with October 2010. At the same time, however, the number of unexamined RCE filings grew 95.56%, after peaking at 103.93% in August 2012. In the column above labeled “Totals,” I added the number of unexamined patent application with the number of unexamined RCE filings. When you consider all of these unexamined filings the progress of the USPTO is more modest. There is not a 15.1% dip, but rather a 8.05% dip in unexamined patent filings over this interval.
It seems rather clear that the USPTO has traded an unacceptably high unexamined patent application backlog for a still unacceptably high but better unexamined patent application backlog PLUS a ridiculous RCE backlog. What makes this all the more alarming is the fact that by filing an RCE (or sometimes two or three) the industry is screaming to the Patent Office that the applicant thinks there is something patentable over the prior art and that the application is commercially viable enough to continue to pay patent fees, attorneys fees and take the time and energy to fight to get a patent. Holding this number of commercially relevant patents hostage is a problem that demands to be addressed.
Recently patent attorney and blogger Courtnenay Brinckerhoff explained the RCE problem by giving a real-life illustration of the magnitude of the problem. Brinckerhoff wrote:
“I am prosecuting an application where an RCE was filed in early 2011. After almost two years, it is about 20th in queue on the examiner’s special new docket. If the examiner follows USPTO policy and examines one case from that docket every other bi-week, it will be late 2014 before this case receives an Office Action. The news is worse for other applications assigned to this examiner, because his current special new docket includes about 50 cases. If the examiner follows USPTO policy and examines 13 cases from that docket every year, the most recent RCEs will wait four years for an Office Action.”
Brinckerhoff’s example is not isolated. Many patent attorneys have similar problems with delay. But how did this happen? What went wrong? There are several events that seem to have contributed.
First, the USPTO adopted a new examiner count system. Previously patent examiners would get 2 quota credits toward their production goals for a patent application. They would also get 2 quota credits toward production for each successive RCE. This lead many in the patent community to suspect that some examiners would nearly force RCE filings so they could get 4 or more quota credits for the same application. This did seem to be a real problem in some corners of the Patent Office. However, with the new count system the first RCE can only result in 1.75 quota credits toward production, with second and subsequent RCE filings counting 1.5 toward production. Some feel that this has provided negative incentive for examiners to take up RCE filings. It is impossible to know how much a factor this is, however. It seems unlikely to me that this explains the problem.
The second, far more important, event that lead to the massive RCE backlog was the decision to move RCEs to a special examiner docket. Previously an RCE filing would be treated with special dispatch. An examiner was not supposed to pick up a new case if there were outstanding office actions or RCE filings. So RCE filings had primacy compared to unexamined patent applications. This typically meant an RCE would be picked up within 2 or 3 months. With the creation of a special docket for RCEs and emphasis placed on picking up unexamined patent applications examiners are supposed to pick up a single RCE filing ever other bi-week, which translates to just a little more than 1 per month.
The USPTO policy of minimizing the number and frequency within which an examiner can pick up an RCE is the real culprit that explains the massive RCE backlog. Unfortunately, at least one RCE is all but required in certain Art Units. With RCE delays of 2 to 4 years and an appeals backlog of at least the same time frame commercially relevant patent applications caught in the wrong Art Unit, and based on cutting edge technology where the law is currently in flux, are going to languish for 8 to 10 years at a minimum.
What are practitioners and applicants to do while we wait for the USPTO to figure things out? Chris Holt is the creator of PatentCore, which is the database and associated process behind the PatentAdvisor™ search tool offered by Reed Technology. Holt says that the industry needs to come to terms with the fact that not all Art Units treat applications similarly, even when the subject matter of the applications is similar. Holt explains:
“Practitioners need to wake up and understand that this RCE backlog problem is not evenly dispersed across all Art Units in the Patent Office. Instead, it is clustered. The magnitude of the problem is absolutely contingent upon which Art Unit within which you are operating. And make no mistake, the magnitude of the problem will drastically affect when and if you get a patent. The longer a practitioner takes a one size fits all approach to patent prosecution, the longer they will continue to unnecessarily sacrifice patent term – and even patent existence. This is a big deal.”
The PatentAdvisor™ system offers one very important way for those in the industry, whether patent practitioners or patent applicants, to address the RCE backlog problem. For example, I have written about the extraordinarily low allowance rate in Art Unit 3689, which is far lower than the allowance rates for other Art Units within its own area. See INSERT. Similarly, I have written about the quite high allowance rates for Art Units 2121 through 2129. At the core both 3689 and 2121 through 2129 deal with computer implemented methods and systems. If you wind up in 2121, for example, are looking good. If you wind up in 3689 you are in for a very long journey with little hope of succeeding absent being victorious on appeal.
In order to address the delay issues at the USPTO it is essential for those who need patents in a technologically relevant time frame to understand that the odds are stacked against them in certain Art Units, while the odds are stacked in their favor in other similar Art Units. This means that drafting techniques that characterize the subject invention are critical. While it may not be possible to force your way into a particular Art Unit with a 100% success rate, you can certainly influence the Art Unit you are assigned based on the claims and the way they are drafted.
Similarly, if you file an application and then realize you are assigned to an Art Unit where patent applications go to die are you better off fighting what increasingly seems like a war of attrition, or are you better off immediately filing a continuation or continuation-in-part, tweaking the claims and presenting it so that it might be assigned to a different Art Unit? Still further, you may just decide to file a Track One continuation with solid claims so as to get to the end faster and then appeal. After all, there is no point filing RCE after RCE if it isn’t going to matter. You wait several years to get consideration, prosecution lasts a least another 12 to 18 months, then you file successive RCEs waiting 2 years (or more) each time and then you appeal? No thanks. Cut to the chase and jump to the appeal backlog service line.
Now, the USPTO is trying to address the RCE backlog. They will be holding a series of meetings around the country to take feedback from the community. I will discuss that and what I think the USPTO should do in a subsequent article. If the USPTO can successfully address the RCE backlog without negatively impacting the downward trajectory of unexamined patent applications then an important corner will have been turned and the patent system should be well on its way to a complete recovery many years in the making.
In the meantime, patent practitioners and applicants need to figure out strategies because simply following procedure and waiting indeterminable lengths of time is not a strategy; or at least not a strategy for success. The RCE backlog will continue to strangle commercially relevant patent applications for the near term even if the USPTO embarks upon a responsible solution. Thus, we are left to our own devices.
For those who are interested in checking out PatentAdvisor and seeing how the tool can help you strategically, whether you are an attorney or client, you can sign up for a 2-day free trial. Once you see the information it contains you will be hooked.