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.
Join the Discussion
48 comments so far.
Examiner TomMarch 19, 2013 06:46 am
We also have a workflow bonus that discourages RCEs by requiring us to complete 1-2 new first actions a biweek. As said in posts above, there is no workflow incentive to do an RCE and until that changes the RCEs will languish unless the examiner has a personal reason to do the RCE (i.e. the RCE is a “quick count” for easy production).
QPIDS is probably unremarkable to the backlog. A post allowance RCE is very easy to do, only takes a few minutes to complete and gives lots of production credit. Post alloance RCEs are turned around within a few weeks if not days. For production they are like manna from heaven. Examiners might adjust to the lack of post allowance RCEs by doing less overtime in a given biweek which means the backlog doesn’t move much.
AFCP might help and is fair to everyone. My first one I found a reference relevant to the claim amendment and provided the reference in the advisory but the applicant filed an RCE anyway. I used that reference in the subsequent rejection but because I had already considered and searched the amendment, the rejection went out after a few days of the case going on my docket. Doing AFCP and filing an RCE immediately after an advisory at least keeps the examiner’s mind on your application so you might get a quick turnaround.
Bottom line – if you make the RCE easy to work on it will probably be done ahead of other RCEs and perhaps other DIVs, CONs, and new cases.
From my perspective I look at the blame as being shared with the inventor and attorney. After final, the inventor/assignee seems to want prosecution to go on and I think you attorneys happily file RCEs because that’s more billable hours.
The disconnect I see are the silly one-liner amendments – “wherein said something further comprises something else that is not novel and/or obvious”. I have worked in the same limited area for over a decade so I can usually tell whether a claim limitation will be good or not with just a glance. The inventors and attorneys usually don’t pick up on what would be allowable the same way I do.
For over a year we’ve had staff meetings where our supervisors tell us to have compact prosecution and try to avoid RCEs. BTW, an RCE filing is bad for our individual ‘actions per disposal’ metric. An RCE after an advisory means 4 actions per disposal. To upper management this looks as bad as non-final, non-final, non-final, final and abandonment (abandonments don’t count as an “action”).
I would love nothing better than to do all first action allowances. But those are extremely rare for new cases – that’s you inventors and attorneys fault for presenting broad claims. Usually CONs have the best initial claim sets. Those independent claims usually incorporate previously indicated allowable subject matter which means I only have to do a double patenting rejection in the first office action.
AttorneyTurnedExaminerMarch 17, 2013 08:05 am
One more comment. The original article complained that the Office limited the number of RCEs that can be worked on. This is false. The Office doesn’t limit the number that can be worked on. It just doesn’t require that the examiner work on more than one case on the Continuing New docket every 28 days. Examiner’s are free to do as many RCE cases as they have time for. I don’t think this was mentioned in the comments given above
AttorneyTurnedExaminerMarch 16, 2013 11:32 am
I’m an attorney turned examiner and I can second most, if not all of PTOExaminer’s comments concerning docketing and SPEs who apply pressure not to re-open. These are problems. I can also second the impression that young examiners are sometimes restricted from allowing even when they can’t find appropriate art. This happens when the new examiner’s judgment is not yet trusted to conclude that allowance is appropriate and because, understandably, nobody over the new examiner wants to work for free to do the search for the new examiner in order to assess that judgment. Thus, it is often the case that the only thing left to do is to simply order the examiner to reject. This occurs until a time arrives at which those over the new examiner come to believe that the new examiner is capable of making rejections and is trusted to do a good search. Obviously, the best way to solve this problem is for the PTO to pay for more experienced examiners to search along with the new examiners and for the PTO to get to a point where it no longer needs to hire thousands of new examiners.
But what I most wanted to post is a complaint about the way the conversation and tone ALWAYS tilts toward faulting examiners. This obviously occurs because attorneys have the biggest megaphone and because the Office discourages examiners, who could be seen as representing the Office, from hosting their own discussion forums. So, the outside conversation is often a one-sided, self-reinforcing conversation. One thing I would like for all on the outside to understand clearly is that rejecting claims is MUCH more work than allowing claims. And, at EVERY step in prosecution, the Office awards more count points to the examiner for allowing claims. Thus, the system is HEAVILY stacked in favor of allowance. All else needs to be understand within this context.
So, the question that needs to be addressed is not why don’t examiners allow enough, but why do examiners ever make rejections? It’s only because either (1) the examiner is new and is told from above to reject, (2) the examiner actually believes the claims should be rejected and the examiner is committed to doing his or her duty at the cost of working harder and being paid less, (3) the examiner is afraid that the allowance will be randomly pulled by quality assurance at the PTO and be found to be an erroneous allowance, which means that the examiner either thinks it probably shouldn’t be allowed, or is honestly on the fence about allowance, or (4) the examiner is making a perfunctory rejection in order to appear over the long-run not to be a rubber stamp for allowances. In case (4) you will probably get an allowance at the next action as long as you don’t do something truly silly. In case (1) you have the examiner on your side. So, the only cases in which the examiner’s assessment of your claims is really acting as an impediment to obtaining a patent are those cases in which the examiner honestly believes the case should be rejected (either because the examiner affirmatively believes the claims unpatentable or because the examiner believes that you need to be given a chance to dispel the doubt the examiner possesses over allowance) and is willing to work hard to do his or her job. And, as Americans, you shouldn’t complain about a civil servant honestly trying to do his or her job.
Inventor0875March 3, 2013 01:59 am
Thanks for your positive remarks.
But somehow, your assumptions/logic have lead you widely off target. “Queue” is commonly used in many technical fields (computer science, communications, processor design, software, …..). Waiting in “line” is too linear and limiting for inventors ;>)
Stan E. DeloMarch 1, 2013 12:59 am
You seem to have tipped your hand, as nearly no North Americans would have said that they were in a Queue, outside of perhaps a few Canadians. The international aspects of this change are quite profound, outside of my frequent whining about my perceived loss of US patent rights. The losses are very real, even if practitioners here would prefer to ignore them for whatever reasons.
Thanks for taking the time to write your proposal, which is greatly appreciated here. Others like Paul C. are a breath of fresh from abroad, which American practitioners and inventors would do well to listen to. In point of fact, the US patent system is modeled after the British system, which is in turn a descendent of a much more ancient model. Those that ignore history might very well be doomed to repeat it, unless they are clever enough to sense the difference between then and Now. Anon and Blind Dogma and Step are very good examples of being able to roll with the punches, despite what they might think of my posts. My only desire is to promote the useful arts, and perhaps allow a few inventors to make a few hard-earned profits.
Stan E. DeloMarch 1, 2013 12:56 am
You seem to have tipped your hand, as nearly no North Americans would have said that they were in a Queue, outside of perhaps a few Canadians. The international aspects of this change are quite profound, outside of my frequent whining about my perceived loss of US patent rights. The losses are very real, even if practitioners here would prefer to ignore them for whatever reasons.
Thanks for taking the time to write your proposal, which is greatly appreciated here. Others like Paul C. are a breath of fresh from abroad, which American practitioners and inventors would do well to listen to. In point of fact, the US patent system is modeled after the British system, which is in turn a descendent of a much more ancient model. Those that ignore history might very well be doomed to repeat it, unless they are clever enough to sense the difference between then and Now. Anon and Blind Dogma and Step are very good examples of being able to roll with the punches, despite what they might think of my posts.
Inventor0875March 1, 2013 12:21 am
Proposed USPTO RCE Improvements:
Each RCE Office Action within normal prosecution timing (i.e., within 2-3 months of Response/Amendment).
Applicant requests one additional round of prosecution at a time (not the current 2 rounds).
Additional search & interview included with each round of prosecution. Multiple interviews totaling 2-4 hours is ok.
Fee per additional round, comparable to a normal round of prosecution.
As many prosecution rounds as Applicant needs.
[Also allow additional rounds of prosecution in track-1 cases.]
a) Increase in RCE scheduling to up to 2+ years (from prior 2-3 months), is the primary cause for the increase in RCE cases.
b) Current RCE queue delay of 2 years for multiple cases (following years of waiting in the initial examination queue), is killing innovation.
c) The current arbitrarily long RCE queue delays, without patent term adjustment (PTA), is a violation of (timely) due process and an unjust/arbitrary reduction of the patent term.
d) The arbitrarily long RCE queue delays, with PTA, will lead to game-playing to extend patent term (Exelixis v. Kappos).
e) Game playing will occur without a fee for each additional round of prosecution.
Stan E. DeloFebruary 27, 2013 09:48 pm
You would seem to be trying to whistle your way past the graveyard. The president has absolutely nothing to do with it. The America Invents Act was bought and paid for by larger corporations, who probably don’t care even slightly that they are damaging US patent rights. Perhaps forever.
Senator Patrick Leahy is from Vermont, otherwise known as the IBM state. I suspect that he doesn’t care even slightly that he might have contributed to a very large devaluation of the worth of US patents in general. But then again, he Did get re-elected, much to my regret.
Stan E. DeloFebruary 27, 2013 07:00 pm
BTW- Did I happen to mention that I really dislike the AIA even more than EG does? I have no idea if Eric is an inventor, but I seem to be cursed with the affliction, where others just need to be able to represent their clients in an efficient and hopefully harmless manner. As in the doctor’s oath to *First do no harm* I guess Senators like Patrick Leahy are mostly immune to that sort of examination.
GoogooliFebruary 27, 2013 06:49 pm
The PTO is stil part of the department of Commerce, which gets/requires funding approval from the President’s Budget plan – so the budget planning for the commerce department affects the PTO still (?):
“The President’s Budget provides the USPTO with the funds we need to reduce our patent application backlog and pendency levels, improve patent quality, and make necessary investments in our information technology (IT) infrastructure. These investments will support actions we have already taken and have underway at the USPTO to create a more efficient and effective Office. We continue to work closely with the Department of Commerce in planning and preparing our priorities and budget requirements to ensure our goals and initiatives are aligned with and support the goals of the Department.”
Stan E. DeloFebruary 27, 2013 05:45 pm
I don’t think it should affect the USPTO at all, outside of them not being allowed to hire more examiners any more perhaps, which are desperately needed in my opinion. Congress seemed to be *promising* that they will cease and desist from swiping funds from the patent office, and in their panic they will probably forget all about a measly 200 million that they might otherwise be inclined to *appropriate*.
Mark NowotarskiFebruary 27, 2013 05:00 pm
By the way, how can this affect the USPTO since it is entirely funded by user fees?
Mark NowotarskiFebruary 27, 2013 04:59 pm
” furlough” as in temporary layoff? Must be the sequestered fiscal cliff I’m hearing so much about.
GoogooliFebruary 27, 2013 02:44 pm
A few newly hired examiners (at the PTO less than 9 months) received furlough notices this morning. Hopefully a small decrease in the number of new examiners will not increase the backlog much.
John DarlingFebruary 26, 2013 10:29 am
“It should be noted that TC Directors evaluate their SPEs based on how many cases their examiners re-open (in addition to other metrics.) It actually hurts the SPE if his/her examiners re-open cases.”
I don’t believe that for one second, especially after Ron Katznelson and Kip Werking have consistently shown that about 75% of the application in which a pre-appeal request and/or an appeal brief are filed get re-opened. Clearly there is no negative consequence for any SPE for re-opening.
“Pre-appeal conferences may be effective if an examiners own SPE were not included in the conference.”
What do you mean by “effective”? 75% of pre-appealed and/or briefed applications are re-opened. If applicants were permitted to proceed to the Board as a matter of right (i.e. if the option to re-open were taken away from examiners and SPE’s), the backlog at the Board would easily double, and most likely triple.
What would make conferences “effective” would be to permit applicants and/or their representatives to attend them. In the absence of permitting attendance by applicants and representatives, what would make them effective is if the useless QAS’s at the PTO actually prepared for them and took the role of adversary for applicants. I have an application that I recently briefed (and filed) in which I argued, in three written responses, that the examiner’s secondary reference is non-analogous prior art. I cited the criteria for prior art to be analogous and explained why the reference is not. Not only has the examiner never made any attempt to answer the substance of my arguments, the examiner has never even acknowledged that I’ve made the argument. Three times. Yet when I pre-appeal I get a one page Notice of Panel Decision instructing me to proceed to the Board. Is the QAS who signed off on this so completely unprepared and/or disinterested in the process that he couldn’t even ask the examiner, “Hey, what/where is your response to the non-analogous art argument? You know, the one that is in the first paragraph of the last three written responses?”
Every single QAS in every single TC needs to be sent back to examining. Paying GS-15 salaries to people who have no production requirement and who face no consequences, either from the PTO or applicants or the patent bar, for their horrible and lazy decisions is an idea whose time has past.
AnonFebruary 26, 2013 07:52 am
I am a firm believer that you get what you measure.
Do you see the possibility of writing an article on how examiners, SPE’s and the level above SPE’s are measured?
Are we in fact incentivizing poor examination?
PTOExaminerFebruary 25, 2013 09:07 pm
I do not know about the appeals. It is my understanding that abandonments (like all disposals) benefit SPE ratings.
Mark NowotarskiFebruary 25, 2013 12:44 pm
And a follow up, are SPEs rated on fraction of cases that get abandoned?
Mark NowotarskiFebruary 25, 2013 12:44 pm
Are you saying that SPE’s are not rated on fraction of cases that get appealed or the outcomes of the appeals?
PTOExaminerFebruary 24, 2013 09:45 pm
It should be noted that TC Directors evaluate their SPEs based on how many cases their examiners re-open (in addition to other metrics.) It actually hurts the SPE if his/her examiners re-open cases. This is why I feel the pre-appeal option is just a way for the office to pacify applicants. I have insisted on re-opening more than one of my own pre-appeal cases only to be pressured to proceed to the board by my SPE. If the board reverses an examiner, its generally okay to just allow it at that point “because the board said so.” Pre-appeal conferences may be effective if an examiners own SPE were not included in the conference.
James K. PooleFebruary 24, 2013 12:18 am
Paul, a “pre-appeal brief conference” requires filing the notice of appeal, then a short (5 pgs. max) summary of the applicant’s position. (Sometimes erroneously referred to as a “pre-appeal brief,” although it requires a notice of appeal and is not a “brief”) This is evaluated in conference by the examiner, his SPE and another SPE, who can collectively decide to return the case to the examiner. Trouble is, they need only check a few boxes on a one page form to call the applicant’s bluff and require the filing of an appeal brief. The reference above to the appeal board reopening prosecution after they consider an appeal brief is no favor, as the applicant is back with the same (recalcitrant or disgruntled?) examiner rather than getting a more objective judgment from the board. As RCE’s take longer and longer, going to appeal sooner rather than later becomes more attractive. I tend to use an RCE to get the claims and record in optimum shape for an appeal, if it appears that the examiner does not see patentable subject matter of reasonable scope. Like Winston Churchill, all I promise inventors/applicants for patent prosecution is blood, toil, tears and sweat plus high legal and PTO fees. I currently prosecute relatively few applications, but have seen many of the tactics described above, including “ambush” prosecution and examiners insisting on re-searching cases when claims are amended to include limitations from the spec, because they never searched more than the original claims. Although costly up front, I have become convinced that it would be cost effective to file applications with principal claims of reasonable breadth, plus dependent claims including every limitation which might be required to obtain allowance through amendment. Gene Quinn is correct that simply seeking input from the patent bar and others re RCE’s will not solve the increasing problems. RCE’s need to be restored as a method of actually continuing prosecution without undue delay.
Paul ColeFebruary 23, 2013 04:55 pm
I did not know and have never been told by any of my US colleagues about pre-appeal conferences. But the next time I recieve a final rejection on one of my clients’ US applications I will follow this up.
Stan E. DeloFebruary 23, 2013 01:46 pm
Excellent point Mark-
Software innovations sometimes stand on the shoulders of dozens or hundreds of prior inventions, so it makes deciding what is really new and novel and/or obvious much more complicated it would seem to me. Most of my innovations are mechanical or based upon the actual physics involved in different areas, which are quite different than the design of operating systems inherent to software innovations. Personalities are also involved, which further tends to obfuscate the issues in question.
Mark NowotarskiFebruary 23, 2013 10:45 am
Wildly variable rates of allowance seem pretty inexcusable to me,
On an examiner-by-examiner or applicant-by-applicant basis, I would agree. But on a technology-by-technology basis, I wonder if wildly varying allowance rates might be more indicative of inherent challenges in determining the obviousness of inventions in those technologies.
AnonFebruary 22, 2013 05:47 pm
The word is “accountability.”
Stan E. DeloFebruary 22, 2013 04:54 pm
That is what maintenance fees are supposed to be for. They (the USPTO) grant patent rights for a very reasonable price in my opinion, with the understanding that they *might* be able to recoup some of the costs for their efforts at a later date. As most of us here realize though, many times patents go abandoned since they are not profitable, and the maintenance fees are not paid somewhere down the road.
That somewhat misses the point of what is being discussed here though, as if the examiners are being leaned on too hard in the first place, they might discard inventions just because they can, and it also happens to be profitable for them to do so.
Perhaps the whole model for the compensation of the efforts of the patent examiners is the real problem. Why couldn’t they just be paid a reasonably affluent salary, with periodic reviews of their *performance* once in a while? That would seem to point the glaring light of day at the SPE’s, where the real responsibility for all of this would seem to or should reside in my opinion.
If the SPE’s are unable to perform properly, perhaps they should be replaced by others that might not be so stuck in the mud. Wildly variable rates of allowance seem pretty inexcusable to me, and they might be actively destroying or hindering very important areas of commerce. Once again, why should they care at all, unless it gets a bit Personal when they have to go find another job?
Inventor0875February 22, 2013 04:04 pm
The arbitrarily long RCE queue delays need to be fixed.
USPTO should go back to treating RCE’s as paying for additional rounds of examination; with Office Action within 3 months of Response/Amendment.
The current arbitrarily long RCE queue delays, without patent term adjustment (PTA), is a violation of (timely) due process and an unjust/arbitrary reduction of the patent term.
The arbitrarily long RCE queue delays, with PTA, will lead to game-playing to extend patent term.
JJFebruary 22, 2013 12:20 pm
Good stuff. I appreciate your work here.
Gene QuinnFebruary 22, 2013 12:13 pm
There is no doubt that many in the younger generation are growing up without responsibility and a sense of entitlement that will not serve them well in the real world.
I hear a lot of things, and filter them into a variety of categories. When I refer to those junior examiners who are being told this I am piecing together a lot of things I’ve heard. I always look for indicia of reliability, and when I hear that examiners are seeking transfers out of one Art Unit to another because they don’t want to simply reject and then be sent to defend a rejection they know is improper that has a ring of authenticity to it. I also hear about stories of examiners who quit because they didn’t sign up to reject applications based on prior art that isn’t applicable.
JExaminerFebruary 22, 2013 11:41 am
I think there are two ways to alleviate the RCE backlog. A separate RCE docket that would act similar to an amended docket with longer time periods or changing examination in a process I’ll describe below.
I don’t know about other art units but mine constantly receives really broad claims. I’ve noticed something I’ve liked examining PCT applications that require restrictions. With unity of invention, unlike a restriction, it requires a “rejection” of sorts to break unity. Often I will place some really solid broad art against the independent claim and they amend in kind for the response. It not only gives me an idea of where they are going with prosecution but also whether I’m on the right track with my art. It’s almost like a preview round for both sides. It shows the attorney how broad the independent claim is and gives us a chance to focus examination without wasting too much time.
Imagine how much sooner the cases would go through a first round of prosecution. The patent can have an many claims as they want but they can select up to a certain number to be examined on a first round that would be similar to a PCT restriction. After that prosecution would proceed as normal with the non-final/disposal and then hopefully final/disposal. I think that would largely eliminate RCEs in my area.
Mark NowotarskiFebruary 22, 2013 09:56 am
I, as an examiner, have dealt with “recalcitrant” attorneys (who are people).
What advice would you give to another examiner that has to deal with a recalcitrant attorney? What strategies are effective? What ones aren’t? What is the end goal?
Stan E. DeloFebruary 22, 2013 01:15 am
From a totally different perspective, consider the plight of your average independent inventor, that is trying to figure out which is the more valuable way to proceed. I tend to think that it is sometimes forgotten in all the changes being bandied about by the patent office, when they initiate such complicated procedures, which are so well described by PTOExaminer.
All we need is a fair and impartial decision, which is getting more and more nebulous with further management decisions as we go along it seems. I have seen good companies die due to over-management, if you will, which reminds me of what might be happening here. Things obviously needed to be changed pretty radically, but some due care and caution would seem to be indicated to me.
Recent conflicting court decisions make things even murkier, and it becomes even more risky to venture to invent and try to profit thereby. Do the courts even consider that aspect of it? I would venture a guess that they Do Not, as why should they care even slightly about that with their cushy life-time tenured jobs? With just a stroke of a pen, they can make entire industries obsolete with their particular judicial fiats, and I am not talking about cheap Italian cars in this case.
Without inventions, there would be no need for patent attorneys or agents at all, which I am reasonably certain that the Supreme Court probably wouldn’t miss at all.
A free three month supply of Blind Blueberry kool aide to the first 12 respondents to contact me personally!
Stan E. Delo
Port Townsend, WA
JJFebruary 21, 2013 08:08 pm
I think you have a lot of this correct (some things I disagree with or think you may be overstating, but I want to point out one that has been on my mind separate of this discussion). The part of your comments I resisted the most upon reading them are the comments you cite about junior examiners who say they aren’t allowed to allow cases as being persuasive evidence of a problem. I’m sure there are examples of diligent junior examiners who are thorough and that are being held back. Some of them are quite good, no doubt. However, I’d say that many of these new folks hired by the Patent Office over the last few years are probably best described by the following that I just read the other day. This is Jim Geraghty. He calls this trend “effort shock”:
“Young people go through their childhood and teen years, believing that they are uniquely gifted and talented and wonderful and believing that their adult life will be one fabulous victory and success after another. And then at some point they depart the protected simulation of life that is childhood/high school/college . . . and the real world just kicks them in the crotch again and again. (This is a bit of what Adam Carolla talked about in his rant about Occupy Wall Street.) And so instead of concluding, “Oh, achieving my dream is going to be a lot harder than I thought, I had better redouble my efforts,” they deflect the hard truth of responsibility and conclude that somebody else, somebody out there — society — is to blame. They can take no joy in anyone else’s success, because that just reminds them of their own failure to achieve what they had envisioned all of their lives. And their attitudes quickly become one more obstacle — short-tempered, incapable of taking responsibility, quick to blame others, perhaps paranoid, concluding others are out to sabotage them.”
Just some food for thought…
Gene QuinnFebruary 21, 2013 05:28 pm
You are certainly 100% correct about there being recalcitrant attorneys. Another category of attorneys might also be those that simply want to extend prosecution as long as possible. The worst case scenario are those that fall into both categories.
I don’t know which Art Unit you are in, and I don’t expect you to provide the information. Having said that, there are some Art Units that direct patent examiners to not issue patents. I hear the stories from junior examiners who are told to create bogus rejections. I hear from attorneys and see bogus rejections myself. There are patent examiners who simply won’t issue patents unless things go to appeal and that ought not be the way. Sure, everyone can make a mistake, but forcing an appeal route is unfortunate.
I have a case where I’m the inventor and in the final rejection the examiner says that he choose to ignore certain amendments to the claims because it was not clear we intended to make the amendment. What? Never heard that one before.
The same examiner also didn’t even look at the drawings to see a particularly important claim limitation had support, simply ignoring the claim limitation and saying it was new matter, which it clearly was not.
The same examiner also told us that claims would issue after a favorable interview. We then waited over 18 months for a final rejection.
Hard to justify any of those actions let alone all of them. Unfortunately, my application is in an Art Unit with a low allowance rate. So we are going to go the appeal route. I will submit affidavits as well, which were not reasonably be submitted earlier because the examiner told us that our amendments would create allowable subject matter.
The problem is there are some examiners that are impediments to patents even when they are told the inventor would take any claim, no matter how narrow, and then circle back with a continuation. Similarly, there are recalcitrant patent attorneys/agents. The bad examiners and attorneys/agents likely are very small in number, but they do seem to cause a lot of issues.
ExaminerXFebruary 21, 2013 04:37 pm
In addition to what I said above, my anectdotal/personal evidence that it is not all the PTO’s fault that there is an RCE backlog is as follows. There are some attorneys that I could name, that as soon as I see the attorney’s name on the application, I know there will be an extended prosecution with long arguments, RCE’s and possibly an appeal. There are assignees I could name from which likewise I expect RCE’s and/or an appeal. There are other attorneys and assignees that I could name, that as soon as I see the name, I can guarantee that there will be neither RCE nor appeal and the application will either issue or be abandoned within the first two actions.
You as an attorney have dealt with “recalcitrant” examiners (who are people). I, as an examiner, have dealt with “recalcitrant” attorneys (who are people). Would it be so hard to believe that some attorneys could be equally as bull-headed, stubborn, recaltricant, litigious, and unreasonable as some examiners?
step backFebruary 21, 2013 04:08 pm
Thank you for giving us a peek into what otherwise is the black hole of PTO internal goings on.
It used to be that RCE’s were ahead on the queue over Con’s and Con’s were ahead of Div’s (since much of the prosecution work had already gone into the RCE’s and the Con’s). Now the world is topsy turvy –turned on its head. Ouch, that hurts.
As for practitioners out there, one more piece of (not-legally binding) advice: If you have an inventor over 65 years of age, or of poor health, etc. who can qualify your case for “special” status; do it. It moves your case ahead of everybody else. (Kind of like at Disney land where you have been waiting on line 45 minutes for Mr. Toad’s wild and whacky car ride and a wheelchair pushing family of 10 bumps ahead of you. Foul is fair. Bubble, bubble. So goes the witch’s brew. 😉 )
ExaminerXFebruary 21, 2013 04:05 pm
I’m an examiner. You seem to believe that the “fault” lies all with the PTO. If there is a clear error in a final rejection, the applicant can request a pre-appeal conference and if the applicant is right, prosecution will be reopened without need for an RCE. Two supervisor-level reviewers have to agree with the examiner in order for the examiner’s action to stand. If you file an appeal brief, again, before the appeal can be sent to the BPAI, two supervisor-level reviewers have to agree with every aspect of the rejection and find that there are no errors in the rejection. If the either supervisor doesn’t agree with the examiner, prosecution is reopened.
Alternatively, if the final rejection was improper, an RCE is not necessary.
The fact that you choose to file an RCE rather than an appeal or pre-appeal conference (or petition that final was improper) seems to indicates to me that it was not “all the PTO’s fault.”
I could go on and on about how applicants often seem to want to prolong prosecution and attorneys sometimes don’t take an application “seriously” until its under final rejection, but your mind is already closed as to whose “fault” it is, so I won’t bother.
Mark NowotarskiFebruary 21, 2013 03:24 pm
Of course, having a better picture of this should be a first objective in setting any corrective course of action.
AnonFebruary 21, 2013 01:28 pm
I think you raise some good points, and I would welcome some sense of how prevalent each of our points are.
There can be no doubt that there are pro se (and pro se style) applicant responses.
However, as the majority of bulk of time in “the queue” rests pedominantly with the Office, I think my view would be much more accurate. By far.
Of course, having a better picture of this should be a first objective in setting any corrective course of action.
Mark NowotarskiFebruary 21, 2013 11:49 am
With such an examination I can go to my client and explain that either they do not have a patentable concept in their application, that the patentable concept is not worth pursuing as it does not make economic sense to have a very thin slice of IP, or that the Office is STILL wrong and the application is still worth fighting for.
Agreed, and I suspect that you are very effective at getting your cases either allowed, abandoned or appealed in a relatively small number of office actions.
But not all applicants behave this way. There are some major applicants that never abandon and never appeal. They file response after response no matter what the contents of a rejection are. Half of these applicants’ pending cases have had 5 or more rejections. Several of their pending cases have had 10 or more rejections. There is no evidence that these applicants have any sort of procedure in place to abandon a case based on a strong rejection or appeal a case based on a weak rejection. The only thing they do is respond.
Does this not clearly indicate that there are certain behaviors by applicants that have a significant impact on the backlog problem?
AnonFebruary 21, 2013 08:41 am
To a certain point, what we have is a bunch of deck chairs on the Titanic.
It really isn’t about taking anything personally. It is about a client who has legal rights and an Office that does not seem capable of making a true argument as to a denial of those legal rights.
Of course – in the ideal situation – you obtain the legal rights. This could be through written response, interview and written response, appeal, etc.
BUT THAT IS NOT THE POINT.
The point is that the Office attempted to reject its way out of its work. This is an unmistakable conclusion when you look at the big picture of the historical allowance rate coupled with the statements of entrenched Office personal about the “record quality under the Dudas regime coupled with the Tafas debacle. What ensued was a massive movement of deck chairs. That movement is still going on.
The answer – the ONLY answer – is to provide a complete and adequate examination. With such an examination I can go to my client and explain that either they do not have a patentable concept in their application, that the patentable concept is not worth pursuing as it does not make economic sense to have a very thin slice of IP, or that the Office is STILL wrong and the application is still worth fighting for.
The entire “fault” if you want to label it so for the fiasco of the backlog lies with the Office.
The real point here is not “avoiding an RCE.” The real point is obtaining what your client deserves.
And if you are NOT taking that personally, then I would respectfully suggest that you are in the wrong business and that your clients deserve more ardent representation.
PTOExaminerFebruary 20, 2013 11:56 pm
“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.”
As of right now this special docket includes CON’s, DIV’s and RCE’s. Apparently CON’s and DIV’s are given priority over RCE’s. I have about 20 CON’s and DIV’s and 20 RCE’s. We are required to work on at least one of the top 5 cases from this docket once a month (or every other biweek). I don’t know how the system selects the top 5 each biweek but its certainly not by filing or effective filing dates. My top 5 cases have been CON’s and DIV’s only for the past year. I have never seen an RCE in my top 5 (since the new docket management system was put into place to indicate these 5 cases). Most of my RCE’s have effective filing dates that are earlier than all of my CON’s and DIV’s.
The new docket management performance appraisal plan element is what is making the RCE backlog grow. It requires Examiners to work on oldest regular new cases, amendments, CON/DIV/RCE’s, after finals, returns, appeals, etc. every biweek or every other biweek, by a specific date. The requirement takes away a lot of leeway from Examiners on which cases to work on in any given biweek and which cases should be worked on earlier in the biweek. Every case now has a clock attached to it, and this clock increments on a daily basis. Each docket (oldest regular new cases, amendments, CON/DIV/RCE’s, after finals, returns, appeals, etc.) has its own rules on clock deadlines and priorities. On top of that, many cases have diminished counts (such as RCE’s or disposals) and some have increased counts (regular new). It is a major pain in the neck to try to navigate through my docket to determine which cases I need to work on each biweek and how many counts each case might get me so that I can give my SPE the 100% production and 100% docket management he needs to make himself look good. The old count system really kept things simple.
I suspect management will simply create a new RCE-only docket and require examiners to work on at least one RCE each biweek on top of continuing to satisfy the requirements for the other 10+ dockets each biweek.
Mark NowotarskiFebruary 20, 2013 05:20 pm
I used to fly a lot in my corporate job. Every time I flipped open an airline magazine, I saw an ad for Karrass seminars on negotiating. Their tag line is “In business as in life, you don’t get what you deserve, you get what you negotiate.”
I took one of those seminars, and what an eye opener. There were several key points they made on effective negotiation. Number one was:
Don’t take it personally
When I read the above comments, I sense a lot of personal frustration. I feel it too when I get a rejection. Who wouldn’t. But I find that if I can detach myself from the frustration, I can see more clearly the position that the examiner is taking and why. That goes a long way towards getting swift agreement on allowable claims, or conversely, swift agreement that the case needs to go before the PTAB.
Either way, an RCE is avoided.
AnonFebruary 20, 2013 05:06 pm
sorry – Why bother with the quid?
AnonFebruary 20, 2013 05:05 pm
I would also echo step back’s view. The quo is already taken. Why bother with the quo?
AnonFebruary 20, 2013 05:04 pm
I would go one step different:
The problem is that the examiners doe not have command of the legal understanding on how to present an obviousness case.
It is less a matter that applicants may view thing sdifferently. Applicants are beign advised by counsel who know the law.
When the examiner does not know the law, and cobbles together a rejection that merely facially reflects the law, but is riddled in errors, the client is likely to hear fromt eh counsel that the rejection can be overcoem in a number of ways.
If, on the other hand, a rejection is well written – and well grounded in good law and prior art, counsel is far morelikely to present an accurate picture to the client that would contain a far more greater number of occurances to not pursue.
In other words, this problem is NOT a both sides problem. It is an examination problem.
I have read in other places, and have taken the graphs mentioned and compared them. The graphs are teh burgening backlog in any of the areas in the PTO – appeals, RCE’s, unfinished applications and unlooked aapplicaitons and then take and flip the allowance rate curvegrpah that he Office so proudly hailed (in the Dudads area) as evidence of its high quality examination. There is a virtual one-to-one correspondence with an appropriate time shift.
That alone tells you where the core of the problem is.
step backFebruary 20, 2013 05:03 pm
The PTO has no motivation to negotiate.
The inventor’s contribution to society has already been early-published. (No more quid quo pro)
The inventor’s 20 year patent term clock is counting down (tick, tick, tick)
Embarrassment and shame are not words that bother the PTO anymore.
So what is there to “negotiate” about? (especially if the examiner has his RCE points in pocket)
Mark NowotarskiFebruary 20, 2013 03:21 pm
The core of the RCE problem is that applicants and examiners do not have a common understanding of what is legally obvious. Hence examiners are failing to convince applicants to abandon (or amend) and applicants are failing to convince examiners to allow. The inevitable result is the growth in RCEs and appeals.
Once upon a time we had the TSM test which was a commonly accepted bright line test to help both sides reach agreement. The Supreme Court has clearly stated in KSR, however, that the Office is to use professional judgment and NOT to use bright line tests for obviousness. This means that the personal negotiating ability of both applicants and examiners is critical to getting swift agreement on allowable claims. Anything the Office or the Patent Bar can do to increase the personal negotiating effectiveness applicants and examiners will help reduce the RCE problem.