The High Tech Law Institute of Santa Clara Law is hosting an upcoming USPTO roundtable and focus session on February 20, 2013 at 9:00. RSVP’s will be taken by the USPTO on a first come first serve basis (see following invitation for the details).
Posts Tagged ‘RCE’
The USPTO has announced the implementation of a pilot program, effective from May 16th until September 30th, to permit applicants to file IDS statements after payment of the issue fee in utility and reissue applications, without the need to continue prosecution by filing a “working” RCE with the IDS. The goal of the program is clearly to reduce the number of pending RCE’s, which now make up the majority of the docket of many Examiners. A link to the USPTO’s press release can be found at the end of this post.
The program is not without “catches.” Applicant must electronically file a request form (no new fee), the IDS, and still file an RCE and the Petition to Withdraw, with the usual fees. If the Examiner finds no reason to reopen prosecution, he/she will issue a supplemental notice of allowability and amended notice of allowance, and will not activate the RCE. Applicant will receive a refund of the RCE fees. Otherwise the RCE will be activated, and prosecution will be reopened.
Although entry of any amendments after final rejection has always be discretionary with Examiners, for pretty much my entire career, I have had good luck continuing prosecution after final rejection – sometimes filing multiple Rule 116 amendments or making multiple calls – not really interviews – to the Examiner. I have found most Examiners willing to “continue talking” after final, and even to grant formal interviews – particularly if it is the first one in the application.
Now the PTO has formalized “Let’s Make A Deal” which is a set of guidelines that, cautiously, encourages Examiners to continue to consider post-final amendment, even if it requires some – but not too much – further consideration. Let’s hope this will lead to a more productive, less adversarial relationship, between prosecutors and Examiners, so that applicants feel less “forced” to simply give up and file an RCE. I continue to believe that the backlog would noticeably shrink if Examiners were required to pick up the phone after receiving a Rule 116 Amendment, and not just print out the “standard” Advisory Action refusing to enter the amendment.
Commentators, including Prof. Hal Wegner, have been sounding the alarm regarding the increasing number of requests for continuing examination that applicants are filing. The PTO projects 325,000 RCE’s by FY 2018. They have gone further in recent posts, in attributing these filings to “outlier examiners” who refuse to continue prosecution after final rejection, even after agreeing that fairly simple amendments would result in allowance. Some of these examiners are intent on “making law” – in other words, they have the tenure to ignore the MPEP and controlling decisional law. Other examiners are simply “young,” at least in experience. I find that these Examiners fail to allow applications because they don’t understand the concepts of burden or proof and/or what is, or is not, evidence of patentability. Wegner writes, “All the good intentions to improve the patent system will be for naught if the RCE continues to be used by outliers within the Office to swamp the system for personal production goals.” Hal has suggested a system whereby, after final rejection, applicants can petition to have the application transferred to another Group Unit for review by a senior examiner.
Given that these outlier examiners cannot be fired or retired, I think the solution is to bring back the “strong Practice Specialists” and to bring them back in force. From the mid- 90’s until about 2003, Group 1600/1800 had three “strong Practice Specialists” – Richard Schwartz, Brian Stanton and Margaret Parr. I only worked with the first two, but heard many good reports about Margaret as well. Needless to say, they are no longer at the Office. These were bright, experienced (ex-)Examiners who had real power to effectively compel examiners to allow cases.
This is how the system worked. If the issues were extremely focused – meaning that 99% of the time the final rejection was based on alleged anticipation or on a fairly straightforward obviousness rejection – often based on just one or two references – and the Examiner was clearly (of course) wrong – I would call Richard or Brian. They would pull a number of the examiner’s pending cases at once – so as to attempt to prevent retribution if they determined that I was wrong –and review the rejection in question. If they agreed with me, they would walk into the examiner’s office and tell them why he/she should allow the case. If the examiner absolutely refused, the case might go to appeal, but they could block the examiner from filing an Answer. Although Brian and Richard did not always agree with me, I never had to go this far. They could also offer a compromise. Historically, Director John Doll absorbed a lot of criticism for how he ran 1600/1800 in this period but this is one thing he got right.
So, Director Kappos, let’s try it again. Only let’s unleash an “A Team” of thirty or more Practice Specialists with a mandate to break up the types of stalemates that lead to RCEs. I know that there are Prosecution Ombudsmen, but so far as I can tell they have no clout, particularly with senior outlier examiners. Appeal Conferences have been no help, either. Applicants cannot participate and a negative outcome – almost assured since the examiner and his SPE or Group Director are going to make up 2/3 of the panel – will only lead to more RCEs. Simple raising the cost to applicants to file an RCE or to appeal is not a fix, not when they have no choice. Let’s have some change that matters, to coin a phrase.