Posts Tagged: "RCE"

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. 

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.

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.

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.

Unlike certain rejections one faces in life, a rejection from a patent examiner is never the end of the story, and definitely not final – even when the rejection is called a final rejection all hope is not lost and there are things that can be done to continue to attempt to persuade and ultimately convince the patent examiner you are entitled to a patent… Generally speaking, what you will want to do after you get a final rejection will not be the type of thing you will have the right to do. In that likely situation, the most common thing to do is file what is called a Request for Continued Examination (RCE), which is allowed under 37 CFR 1.114. An applicant request continued examination of an application at any time after prosecution in the application is closed.

After several articles and webinars discussing appeals outcomes at the USPTO, we have received numerous requests for Pre-Appeal Brief Conference data to explain how advantageous the program really is for applicants. Using the vast data resources of our system and Public PAIR, we studied all appeals from January 1, 2006 (six months after the program was instituted), to the present day, including pending PBC cases. For the purposes of this article, we were chiefly concerned with the overall effect that a PBC had on the outcome of an appeal. As such, we have indicated that a PBC ended with a “decision for applicant” when the application was either allowed or prosecution was reopened following a PBC decision, regardless of whether the decision was due to the PBC decision itself or a subsequent pre-appeal brief office action. What we found was that, while few PBCs result in an allowance from the PBC decision itself, they have a net positive effect on an application’s overall appeals success. An explanation of our findings follows.

The Track One program was instituted on September 23, 2011, as part of the America Invents Act. Known officially as the “Prioritized Patent Examination Program,” the USPTO promises a final disposition within 12 months for applicants who participate in the program and who pay the $4,000 fee for the privilege. To be eligible for participation in the program, an application can have no more than four independent claims and 30 dependent claims and no multiple dependent claims. Per USPTO regulations, applicants can request examination under the Track One program either from the date of original filing or with an RCE. We wanted to find out how beneficial the Track One program was for applicants who entered it at the beginning of prosecution versus at the RCE. The Track One program was ripe for study, which we originally started in 2015. This article is an update on our original findings, with a few new surprises thrown in.

The first time you will substantively hear from the examiner is when the examiner issues what is referred to as a First Office Action on the Merits (FOAM). At this point you are now truly beginning what most would refer to as prosecution of the patent application. The examiner has told you what, if anything, he or she thinks is patentable, and explained (usually in abbreviated fashion) what claims are lacking and why. The applicant, or attorney, must respond to each and everything raised by the examiner in a response filed no later than 6 months after the date of the First Office Action. Notwithstanding the 6 month period to respond, the Patent Examiner will set what is called a “shortened statutory period” to respond, which for an Office Action is 3 months. The shortened statutory period is the time period within which you can respond without having to pay a fee to respond. After the shortened statutory period, which can be 1, 2 or 3 months depending on what the Examiner sends, you can respond up to 6 months but only if you request AND pay for an automatic extension. Automatic extensions can get expensive, the cost goes up depending on how many months of extension you have to purchase. They are called automatic extensions because the Patent Office must grant the extension if you ask and pay for the extension. You should, however, plan on doing things within the shorten statutory period in order to conserve funds and in order to get the maximum patent term.