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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Archive for December 7th, 2012

What’s With All The RCE Filings?

Posted On: Dec. 7, 2012   By: Scott A. McKeown
RCEUSPTO Seeks Input to Address Growing RCE Inventory

Request for Continued Examination (RCE) filings are largely a creature of pre-grant, patent application prosecution (patent reissue being the lone exception on the post grant side). Recently, the backlog of RCE filings has increased significantly. This is largely the result of the Office switching the priority of such filings on examiner dockets coupled with the recent initiative to reduce the backlog of unexamined patent applications. 

In yesterday’s Federal Register, the USPTO issued a public request for information on RCE (Request for Continued Examination) filing behaviors during patent procecution (here). The “RCE outreach” is a further effort of the Office to cut down on filings that are viewed as distracting examiners from the existing backlog of unexamined applications. The growing RCE backlog is best illustrated in the USPTO’s presentation explaining the problem (here)

The Outreach Notice poses the following questions:

(1) If within your practice you file a higher or lower number of RCEs for certain clients or areas of technology as compared to others, what factor(s) can you identify for the difference in filings?

(2) What change(s), if any, in Office procedure(s) or regulation(s) would reduce your need to file RCEs?

(3) What effect(s), if any, does the Office’s interview practice have on your decision to file an RCE?

(4) If, on average, interviews with examiners lead you to file fewer RCEs, at what point during prosecution do interviews most regularly produce this effect?

(5) What actions could be taken by either the Office or applicants to reduce the need to file evidence (not including an IDS) after a final rejection?

(6) When considering how to respond to a final rejection, what factor(s) cause you to favor the filing of an RCE?

(7) When considering how to respond to a final rejection, what factor(s) cause you to favor the filing of an amendment after final (37 CFR 1.116)?

(8) Was your after final practice impacted by the Office’s change to the order of examination of RCEs in November 2009? If so, how?

(9) How does client preference drive your decision to file an RCE or other response after final?

(10) What strategy/strategies do you employ to avoid RCEs?

(11) Do you have other reasons for filing an RCE that you would like to share?