Posts Tagged: "RCE"

USPTO Petition Process: Who Should Pay for the Burden of Inordinate Delays and ‘Mistakes’?

In our last article, Part VI, we reported significant Technology Center (TC)-to-TC variation at the U.S. Patent and Trademark Office (USPTO) in pendency and grant rates for petitions pertaining to premature final Office actions. The USPTO Petition Timeline shows these types of petitions are currently decided in an average of 178 days with a 42% grant rate. Because the mere filing of a petition will not stay any period for reply that may be running (37 CFR Section 1.181(f)), a six-month delay in processing after final petitions effectively renders any such decision as futile. Without a decision resolving the status of the final Office action, Applicants are forced to choose between filing an Request for Continued Examination (RCE), a Notice of Appeal, a continuing application or letting the application go abandoned…. In Part IV, we reported many after final petitions were essentially held in abeyance until after the RCE was filed. The RCE was then used as justification to dismiss long-delayed petitions as moot. Here, we identify instances where some petitions were not only granted after the RCE was filed, but the RCE fees refunded.

After Final Consideration Pilot Program 2.0 Extended by USPTO

The United States Patent and Trademark Office has announced that the After Final Consideration Pilot 2.0 (AFCP 2.0) has been extended to September 30, 2020. AFCP 2.0 is part of our ongoing efforts towards compact prosecution. The decision to extend this popular and sensible program comes as no shock, and in fact has become a yearly ritual. 

Winning Strategies for Getting Past the Five Types of Patent Examiner

Any patent attorney knows that each patent examiner can vary greatly in approach to examination. In this article, five different types of patent examiners and suggest prosecution strategies for each to help you get better outcomes for your clients.

How to Respond to a § 102 Rejection

Section 102 rejections are very common at the USPTO and you are likely to get one no matter what kind of technologies you work with. Fortunately, they are not terribly difficult to overcome, as even the least successful method of responding to them is still successful over half of the time. If you get a § 102 rejection, then an interview or an interview paired with an RCE is the best way to respond. Generally speaking, an appeal is arguably the worst way to respond, even though their success rate is not the lowest. This is because appeals have a success rate that is only 1.2 percentage points higher than RCEs. Thus, in most cases there is little reason why any applicant should appeal a § 102 rejection rather than choosing an RCE, since doing so will cost significantly more than and take longer to resolve for almost no additional benefit. Thus, in the ordinary case an appeal wouldn’t generally be the most reasonable first choice to pursue. Filing an appeal instead of an RCE should, therefore, require some kind of special factor that would lead the applicant or attorney to view it as having a strategically superior advantage.

§ 101 Rejections in the Post-Alice Era

The § 101 rejection rate for patent applications in the e-commerce work groups approaches 100%, then drops precipitously for the remaining seven of the top ten work groups with the greatest percentage of § 101 rejections. Before Bilski, the § 101 rejection rate in the e-commerce work groups hovered around around the 30% mark, but has now tripled. The remaining work groups have also seen their § 101 rejection rates rise by 200-300%, although they make up a significantly smaller proportion of total rejections than in the e-commerce art units. While it did not surprise us that these work groups were at the very top of the list for § 101 rejections, we also wanted to know what other technologies are particularly prone to § 101 rejections.