Monday, November 9, 2009

Changing the Patent Examiner Count System: New Rules for Docketing Requests for Continued Examination (RCEs)
WWW.USPTO.GOV

The United States Patent and Trademark Office (USPTO) has had the same examiner production (or count) system for over thirty years. The USPTO recently worked with the leadership of the Patent Office Professional Association (POPA), the union that represents patent examiners, to develop a new examiner production system.

One of the purposes of the new examiner production system is to reduce the instances in which it is necessary for an applicant to file a request for continued examination (RCE) to complete prosecution of his or her application. Although the USPTO recognizes that RCEs are necessary in some cases, the new count system provides incentives to examiners to conduct early interviews with applicants in the hope that RCE filings will become less necessary in many cases. The USPTO’s current examiner production system provides equal credit for first actions on the merits (FAOMs) in the application and for each first action after the filing of an RCE. The new examiner production system provides a greater amount of credit for the FAOM in the application but provides comparatively less credit for the first action after the filing of the first RCE, and less credit for the first action after the filing of any subsequent RCE. The new examiner production system also provides time-credit for initiating substantive interviews with applicant and/or applicant’s representative.

RCEs are currently placed on the examiner’s Regular Amended docket, which means that examiners have two months from the date the RCE is forwarded to them in order to act on the application. Due to concerns of POPA and USPTO Management regarding examiners having sufficient flexibility to handle such applications, RCEs will no longer be placed on the examiner’s Regular Amended docket. Instead, under the new examiner production system, RCEs will be placed on the examiner’s “Special New” application docket. Examiners must act on the application having the oldest effective filing date on their Special New docket at least every other pay period. Additionally, examiners should take-up applications on their Special New docket that they believe are in condition for allowance and give action to these applications without making them await their turn (MPEP 708.01). When applicant believes that an application on an examiner’s Special New docket is in condition for allowance, applicant can request an interview to explain to the examiner that the application is in condition for allowance, and request that the application be taken up for examination out of turn. Examiners will be encouraged to fairly consider these requests.

Applicants who file an RCE where the application is clearly in condition for allowance should not experience a change in the time it takes the USPTO to issue a Notice of Allowance responsive to the RCE. Conversely, when an application with an RCE is not clearly in condition for allowance, such as when the RCE submission includes a large number of references or extensive claim amendments adding limitations not previously considered by the examiner, the time between the filing of the RCE and when an examiner acts on it will be influenced by the number of cases on that examiner’s Special New Docket. Therefore, while some applicants will see no change, or possibly a reduction, in the time it takes for the USPTO to issue an Office action in response to an RCE, others may see an increase in this time depending on the number of cases on an examiner’s Special New docket.

Applicants are reminded that it is not always necessary to file an RCE to obtain consideration of an information disclosure statement after allowance of an application. An information disclosure statement in compliance with 37 CFR 1.98 filed on or before payment of the issue fee will be considered if it is accompanied by: (1) the statement set forth in 37 CFR 1.97(e), and (2) the fee set forth in 37 CFR 1.17(p). See 37 CFR 1.97(d).

The USPTO also has a number of other initiatives, such as training on both compact prosecution and effective interview practice, directed at encouraging a prompt indication of allowable subject matter or reaching of issues in an application. These initiatives dovetail with the new examiner production system by encouraging the indication of allowable subject matter or reaching of issues earlier during prosecution. Despite the placement of RCEs on the examiner’s Special New docket, the USPTO believes these initiatives and the new examiner production system will work together to reduce the overall pendency of applications and the instances in which an RCE is necessary to complete prosecution of an application. Additionally, applicants seeking early allowance of an application can help eliminate the need for the filing of an RCE by addressing all issues in the application early in the prosecution. If an RCE is needed, as is the case with some applications, cooperative efforts between the examiner and the applicant will go a long way toward obtaining early action of the RCE. Of course, for those applicants who do not desire fast action of their applications, the placement of RCEs on the examiner’s Special New docket will afford them the flexibility to better control the rate at which their cases are handled by the USPTO.

The shifting of production credit towards the FAOM and time-credit for initiating substantive interviews, in combination with the other initiatives, should serve to diminish any incentive for prolonging examination or “churning” applications. These initiatives, coupled with the flexibilities already provided by the USPTO, should permit applicants to prosecute their applications at varying rates based on their business needs. However, the USPTO will monitor the effects of RCE handling under the new production system, and in combination with the other USPTO initiatives, and will reevaluate the program and make any changes needed to ensure it best balances the needs of applicants and operation of the Office. For more information go to WWW.GAPATENTS.COM or WWW.GOOGLE.COM.

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