• USPTO Reshuffles the RCE Deck
  • May 10, 2013 | Author: Courtenay C. Brinckerhoff
  • Law Firm: Foley & Lardner LLP - Washington Office
  • The USPTO still is considering information gathered during its RCE Outreach program, but it has made some internal changes that should lead to more prompt examination after a Request for Examination (RCE) is filed. However, because that the backlog of RCEs awaiting examination has climbed to over 110,000, it could be some time before applicants notice an appreciable difference in RCE processing times.

    Reshuffling the Deck

    In late 2009, when the USPTO focused its resources on reducing the backlog of unexamined applications, it delayed the examination of RCEs by moving them from the “Amended” docket to the “Special New Case” docket, which also includes continuation and divisional applications. Under that system, RCEs were docketed for examination in order of the RCE filing date, which placed them at the back of the line behind continuation and divisional applications, which are docketed for examination in order of their filings dates.

    Now, RCEs will be docketed as of the application filing date, not the RCE filing date, which should put them ahead of newer continuation and divisional applications.

    Credit Where Credit Is Due

    The USPTO also reduced the count value of RCEs in 2009, in an effort to promote compact prosecution and disincentivize RCEs. (Clearly that strategy backfired, as it disincentivized the examination of RCEs without reducing the filing of RCEs!)

    Now, at least for the rest of the current fiscal year (e.g., through September 30, 2013), examiners will be able to earn two full counts for examining an RCE, putting them on par with other applications.

    RCE or New Continuation Application?

    With post-RCE examination delays extending to months or years, many applicants now consider filing a new continuation application instead of an RCE, because a continuation application may be examined sooner. (Indeed, several examiners have suggested such a strategy to my clients.) Even if the USPTO’s new efforts are successful in reducing the RCE backlog, applicants may continue to consider this strategy because of the USPTO’s new fee structure, which makes a second or subsequent RCE more costly than a new application. On the other hand, if an application has accrued patent term adjustment due to USPTO examination delays, or has an extensive record that would be difficult to recreate in a new continuation application, an applicant may decide to wait out the RCE delay.

    Getting to the Root of the RCE Problem

    While I am hopeful that the USPTO’s RCE Outreach will lead to more substantive changes that get to the root of the RCE problem and reduce the need for RCEs, I appreciate the USPTO’s efforts in taking these interim steps to address the RCE problem.