The upshot is that the changes will discourage examiners from churning RCEs. Some examiners don’t seem to negotiate reasonably until an applicant files an RCE. Under the current system, the examiner gets “counts” or credit for handling two applications when the applicant files an RCE. After a response to the intial Office Action, the examiner issues a final rejection. Once the applicant files an RCE (granting the examiner credit for a disposal of the first case), the examiner may then allow the application and thereby get 4 counts instead of 2.
The changes to the count system will only grant an examiner 1.75 counts for a first RCE and 1.5 counts for each subsequent RCE. Thus, the examiner will have more incentive to examine a new application where he can get 2 counts than an RCE, although the case with the RCE still has the benefit of familiarity and previous search by the examiner.
The changes also encourage examiner-initiated interviews. Examiners are granted an additional hour of non-examining time for each application, which is meant to be used to prepare for and conduct interviews. As anyone who has prosecuted patents knows, greater progress can usually be made during examiner interviews than by simply ping-ponging arguments back and forth with the examiner.
The other thing that can get very irritating when prosecuting a patent is when you overcome the examiner’s rejection that he has clung to for several Office Actions only to be given a new non-final rejection. The new system seeks to remedy this situation by granting additional credit and providing additional time for examiners to complete the first Office Action on the merits. The goal would be to get a high quality first Office Action that includes all rejections that the applicant must overcome to get the application allowed.
Under the current system, an examiner gets 1 count for the initial Office Action and 1 count for a disposal (allowance, abandonment, RCE, etc.). Under the new system, the examiner will receive 1.25 counts for the first Office Action, 0.25 counts for a final Office Action, and 0.5 counts for a disposal (less for RCEs as discussed above).
There is also an initiative to try to change the culture where examiners are reluctant to allow cases. No examiner will receive an oral warning based on a single clear error in patentability determination, nor shall an examiner be deemed to have failed an improvement period for a single error. Multiple clear errors of patentability during two or more quarters in a fiscal year will still result in negative consequences to the examiner.
The steps are incremental, but they’re a start. It may be good to implement small changes, see how they affect the system, and then determine what additional changes will result in further improvements.