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USPTO plans to change RCE handling in a way which may burden prosecution
November 3, 2009
Intellectual Property Alert

On November 15, 2009, the U.S. Patent and Trade Office (USPTO) will change the way request for continued examination (RCE) applications are handled. The RCE application will go to the “special new” docket of an examiner, instead of the “amended” docket, thereby extending the time period for the examiner to respond to an RCE application by about one year or more. Furthermore, a changed “count” system—a sort of quota system for examination—will reduce the incentive for examiners to encourage RCEs by giving examiners less credit for examining RCEs. 

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Since RCEs are currently on the “amended” docket, examiners are required to take action on an RCE within two months from its first appearance on that docket. Also, the examiner receives his or her first whole count by producing a first Office Action associated with the RCE, which gives an incentive for prompt examination of RCEs.

After November 15, 2009, RCEs will be added to the “special new” docket. This docket also includes applications such as continuations, divisionals, and applications with “special” status. Examiners have a much looser timetable on this docket.

The count system has been altered in a way that lessens the examiners’ motivation to examiner RCEs. A first office action RCE earns one count for a first office action, but a second RCE earns only 0.75 counts. While RCEs will be examined eventually, it is clear that these types of count valuations may lead to “cherry-picking” behavior by examiners who will tend to grant RCEs a second-class status, especially subsequent ones.

Potential good news is that examiners now might be more motivated to allow applications, instead of issuing final office actions, or even working with applicants to allow cases after final Office Action. Forcing the applicant to file an RCE is no longer desirable for an examiner.

There are several ways to react to the patent office’s changes. First, if an RCE is needed and can be filed before November 15, 2009, the RCE will be placed on the amended docket. Second, now more than ever, it is important to take proactive steps to advance prosecution without an RCE, such as challenging finality or using an after-final amendment or interview. Third, a continuation application is also an option, and may obtain more favorable treatment by an examiner.

It is expected that the PTO will change the algorithm for determining patent term adjustment (PTA) or extension of patent term due to PTO delay, commensurate with the new practice for RCEs. However, such a change has not been announced and, thus, it is difficult to opine on how the changes will affect PTA at this time.

For reference, the USPTO’s new policy can be found at:
www.uspto.gov/patents/law/notices/rce_docket.pdf


The foregoing has been prepared for the general information of clients and friends of the firm. It is not meant to provide legal advice with respect to any specific matter and should not be acted upon without professional counsel. If you have any questions or require any further information regarding these or other related matters, please contact your regular Nixon Peabody LLP representative. This material may be considered advertising under certain rules of professional conduct.