A Request for Continued Examination (RCE) is typically the procedural vehicle of choice at the end of a patent application when no claims have been allowed but the applicant still believes that claims should be allowed based on the disclosed invention. The trouble with this, however, is that there is an enormous RCE backlog that has nearly doubled over the past two years. Just several years ago it would take a patent examiner 2 to 3 months to pick up an RCE, but today in many Art Units the wait is well over 2 years, and for recently filed RCEs the wait could be 4 or more years. See The RCE Backlog: A Critical Patent Office Problem.
The RCE backlog is unacceptable, and quite frankly a growing embarrassment. Emphasis has been on bringing down the unexamined patent application backlog, but at the same time the RCE backlog has grown to epic levels. Overall the allowance rate at the USPTO during the Obama Administration is up compared to the Bush era Patent Office, and the total number of unexamined patent applications (unexamined patent applications plus unexamined RCEs) is down by just over 8% between the start of fiscal year 2011 and the end of fiscal year 2012. That is due to a 15.1% drop in the number of unexamined patent applications because unexamined RCEs grew over 95% over that same interval.
The leaders at the USPTO know of the problem and they want to do something about it. They have already tried to institute several programs to reduce RCEs, which include the Quick Path Information Disclosure Statement (QPIDS) pilot program and the After Final Consideration Pilot (AFCP). But still the number of unexamined RCEs grows.
On December 6, 2012, the USPTO published a request for comments in the Federal Register soliciting public feedback in an effort to better understand the full spectrum of factors that impact the decision to file an RCE. The Federal Register Notice set a comment deadline date of February 4, 2013. The USPTO received requests for additional time to submit comments and granted an extension. The new deadline for sending written comments has been extended to March 11, 2013.
The “RCE Outreach” effort, as the Patent Office calls it, will also include a series of Roundtable events that will give the Office the opportunity to hear first hand from the patent community. Roundtable discussion topics are going to be directed to root causes for RCE filings, the role of RCE practice in patent prosecution, prosecution strategies to reduce the need for RCE filings and recommendations for changes in USPTO procedures to reduce the need for RCE filings.
But the USPTO asking questions about RCE practice strikes me as both good and bad. Some of the questions make me wonder whether the Patent Office understands the real-life prosecution dynamic that goes on between applicants and patent examiners who are reluctant to issue patents of any kind. Indeed, when I heard the Office wanted to better understand the factors that lead to the filing of an RCE I was a little taken back. Aren’t the factors obvious? The applicant thinks there is allowable subject matter and the patent examiner is saying no. Maybe there is more than meets the eye, but in my experience the filing of RCEs is just that simple.
There remains a feeling within the industry, which does seem grounded in fact, that some patent examiners in some Art Units force RCE filings and do not take applications seriously until at least the first RCE has been filed. Unfortunately, some examiners in some Art Units don’t seem to take cases seriously until on appeal, but that is another story for another day. Nevertheless, the perception in the industry is that RCEs are caused by poor examination. Yet, one of the questions that will be discussed by the USPTO during its focus session tour is as follows: “What strategy/strategies do you employ to avoid RCEs?” Frankly, in my experience, there is little that can be done to avoid RCEs other than abandon applications, which obviously isn’t an acceptable solution.
In fact, in a case where I am in the inventor we are going to have to file an RCE. We conducted an interview with the examiner after the First Office Action. We came to an agreement with the examiner, who told us that if we did X, Y and Z that we would be good. We did X, Y and Z. We waited over 18 months to get a final rejection that included one of the most bogus 112 rejections I have ever seen. Really, did the examiner not notice the drawings showing what he said there was no support for? Of course, there was plenty of accompanying text as well, but if examiners are not even going to look at the drawings why require a specification in the first place? So, after following directions given by the examiner we not have to file an RCE. This is a typical story that patent attorneys tell over and over again. It seems that some examiners would like to issue patents but are being ordered not to issue by their superiors. At least that is what junior examiners tell attorneys.
The problem of the RCE backlog is a function of the prosecution dynamic and lack of meaningful oversight into areas where RCEs are common and patents issue only after going on the appeal track. Still, in the press release issued by the USPTO recently discussing the RCE backlog and USPTO Outreach, Acting Director Teresa Rea said: “One of the purposes of this outreach effort is not to eliminate RCE practice, but to enable applicants to better understand the full range of alternative options we have available during the examination process.” Yes, there are ways to avoid filing RCEs but they all require patent examiners that are willing to participate in a meaningful way. What about the Art Units where examiners practically refuse to issue patents? I sure hope the USPTO is not going to try and blame the patent community for the RCE backlog. That would be truly unfortunate.
Chris Holt, the creator of PatentCore which powers the PatentAdvisor search tool that provides intelligence on patent examiners and Art Units says that when you look at the individual Art Units it is clear that the RCE backlog is not uniform across the Office. There are pockets where RCEs are out of control. It would seem to me that focus should be placed on those Art Units to find out what is going on. I think if that happens the Office will discover that there are a small number of examiners that game the system and/or who simply refuse to issue patents. Whether it is widespread within the Art Units or caused by supervisors who are philosophically opposed to patents is unknown, although I have my suspicions. The USPTO needs to focus on those pockets and eliminate the RCEs that are necessitated by examiners fighting a war of attrition against applicants.
With the USPTO seeming to focus on educating the community about what they can do instead of filing an RCE one has to wonder whether the Patent Office understands the magnitude of problem that faces patent practitioners daily in some technology areas. For example, does the Patent Office know that attorneys and applicants are given guidance and told that if they follow that guidance claims will be allowed, yet claims are finally rejected? In some Art Units and with some patent examiners what happens is patent prosecution by ambush. You dutifully follow a path laid out for you to get a patent and then get no claims whatsoever. The only option at that point is an RCE, which means you follow another path perhaps to only have that rug pulled out from under you. Surely the USPTO knows this goes on, right?
In large part the RCE backlog is directly attributable to the fact that patent examiners now have RCEs placed on a special docket and they are supposed to only pick up a single RCE every other bi-week, which means they do only 13 RCEs a year. In fact, one of the questions raised for the focus sessions is directed to this point: “Was your after final practice impacted by the Office’s change to the order of examination of RCEs in November 2009?” The answer to that is a resounding YES! I hear from attorneys over and over again that RCE wait times exploded as a result of this reshuffling of the order of examination. That has been my experience as well.
The RCE problem could be fixed tomorrow if the USPTO wanted to fix it. Simply assign RCEs the way they had been handled previously. This lead to RCEs being picked up in about 2 to 3 months. Even if the USPTO wanted to tweak the way RCEs were formerly handled there is absolutely no reason for an RCE to be pending longer than 4 to 6 months.
Limiting the number of RCEs that can be worked on seems ridiculous and calculated to prevent the average time to allowance from dropping. If everyone is doing what they are supposed to do during prosecution the application should be close to allowance in the RCE stage. Not wrapping up those cases that are that close and allowing them to linger for 2 to 4 years seems almost unconscionable to me.
In any event, the USPTO says that RCE Roundtable participants will have an opportunity to speak about these or related topics, so I do suspect that many practitioners will point out the root problem, which in large part is the way the USPTO schedules work. Essentially, unexamined patent applications have been given precedence over RCE filings. So the backlog of unexamined patent applications is poised to drop below 600,000, which is wonderful, but that has simply moved the backlog elsewhere for the large part. It would be far better to modestly chip away at the unexamined patent application backlog by half the rate, perhaps 7.5% every two years, and quickly address RCEs. As impressive as the 15.1% drop in unexamined applications is over the two year period of FY2011 to FY 2012, patent applicants that had to wait in line for many, many years only to again have to wait in a line of the same length to have an RCE considered is simply unfair. That means that the most commercially relevant patent applications worth fighting for will have waited on average 3 to 4 years to be considered, gone through patent prosecution of 12 to 18 months (at least) and then have to wait in line again 2 to 4 years for the RCE to even be picked up? What good does it do to quickly pick up an unexamined patent application in Art Units where at least one RCE is practically required?
The other solution to the RCE problem is that the USPTO needs better control over the work product of those Art Units with extremely low allowance rates and high number of RCE filings. Low allowance with high RCE filings should be a telltale sign that something is amiss and further investigation warranted. If problems are found then it needs to be fixed. Patent examiners that don’t issue patents and play games with the system cause enormous problems for applicants who need patents. Their job is to examine and issue if warranted, not fight a war of attrition. Dealing with the few recalcitrant examiners in the handful of Art Units that work for the “No Patent for You Office” would go a long way to solving the RCE backlog.
Those who are concerned about the RCE problem may wish to attend one of the following scheduled sessions, which will include a public Roundable in the morning followed by a focused session, which will address specific series of questions. The dates and locations of the events scheduled are as follows:
- 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
For information about participating in a Roundtable or focus session see the USPTO invitation to participate.