Patent Office Changes to the Docketing of RCEs

By: Michael A. Leonard II and Sheetal S. Patel

Overview

On October 19, 2009, the USPTO issued a memo indicating changes to the way that Requests for Continued Examination (RCEs) will be docketed. To view the full memo, click Here. Specifically, RCEs will now be placed on the Examiner’s “New Special” application docket, which includes divisional and continuation applications. The stated justification by Director Kappos is that “[this] allow[s] examiners greater flexibility in managing their workload and allocating their time among requests for continued examination and new applications.” Given the repeated comments by Director Kappos regarding lowering patent application pendency, this move is somewhat puzzling as it appears neither to compel Examiners to issue first Office Actions following an RCE quickly, nor to steer Applicants away from filing RCEs. Rather, the changes only appear to potentially create a slight decrease in pendency from filing of a patent application until the issuance of the first Office Action in the case, at the expense of increasing prosecution time.

The Docketing Change May Increase Overall Application Pendency

As noted in the memo, Examiners were previously required to act on an RCE within two months of the filing thereof. However, the New Special application docket has no such constraints. In our experience, it usually takes Examiners about a year, and sometimes more, to issue a first action for a continuation or divisional application.

Nonetheless, we do not believe that Examiners will take such a long amount of time in issuing a First Office Action on the Merits (FOAM) following an RCE due to the “low hanging fruit” principle. While Examiners receive diminished credit for FOAMs following an RCE (click Here to view a discussion of the recently adopted count system changes), the diminished credit does not appear to be very substantial (1.25 1.0 0.75 counts). The first FOAM in a case generally requires considerably more work than subsequent FOAMs. Thus, Examiners may actually receive more counts as a ratio of hours worked for subsequent FOAMS where they are already familiar with the case and tend to only have to search a few newly added features. Further, Examiners are able to more effectively and efficiently issue a FOAM following an RCE when the application is relatively fresh in their minds. Allowing the application to stagnate for too long may harm the efficiency advantage that Examiners gain by addressing the application more quickly.

The more likely effect is that the average time taken to issue a FOAM following an RCE will increase somewhat, perhaps to 4-6 months, as Examiners may reserve the easy counts for FOAMs following an RCE until a bi-week where they could use the counts. This will, in turn, increase the total time to prosecute the application. While Examiners may pick up slightly more new cases and overall pendency to the first Office Action issued in a case may fall (which is an objective that Director Kappos has been directed to accomplish by Secretary of Commerce Gary Locke - the goal is 10 months), the average time to prosecute an application will likely rise somewhat.

The Docketing Change does not Incentivize Most Applicants to Avoid RCEs

For corporations who are under a cash crunch in the current economy, any delay by the USPTO may be welcome from a financial perspective. With reduced IP budgets, some clients are instructing their counsel to delay filing of Responses until close to the due dates thereof. Delaying the hit to the IP budget for a Response to a FOAM following an RCE until a later budgetary cycle may thus be seen as a positive. Also, the prospect of having a patent issue a few months earlier is unlikely to be a significant incentive against obtaining an RCE in many cases. This is borne out by the large number of appeals and Pre-Appeal Brief Requests for Review that Applicants have been willing to file recently.

Instead, a fee increase would likely be a more effective way of encouraging Applicants to work more closely with Examiners in view of the USPTO’s goal of allowing or abandoning applications more quickly. Corporations are increasingly conscious of the amount spent in prosecuting each application Increasing the fee for an RCE may encourage Applicants to seek to find common ground with the Examiner, or to abandon applications that no longer seem to have much value, rather than filing RCEs.

Conclusion

While they may serve as a vehicle for arbitrarily lowering pendency from filing of an application until the first Office Action, the new RCE docketing changes only appear to have the potential to increase the overall time needed to obtain a patent. While Director Kappos’ policy of encouraging Examiner-initiated interviews and lowering the number of counts for FOAMs following RCEs is commendable, irreconcilable differences between Applicants and Examiners will still occur, as evidenced by the high number of appeals and PABRFRs. As Professor Crouch indicated on PatentlyO, the number of RCEs filed in 2008 and 2009 exceeded 100,000, and RCEs are still likely to occur in many cases.

Accordingly, the new RCE docketing changes are not likely to have any tangible beneficial effect on patent prosecution. Rather, the only result most Applicants will likely see is increased time to obtain a patent.