Under current PTO procedure, RCEs are treated like a continuation of prosecution in a currently pending application. By filing an RCE, an applicant can continue negotiations with the examiner in a pending application: the applicant can get the examiner to consider amendments and arguments that were not previously considered and basically reopen prosecution after a final rejection. Although requiring an additional filing fee, the procedure is much cheaper and faster than an appeal to the Board. Currently, examiners are required to act on RCEs within two months of entry onto their docket. Patently-O notes that over 100,000 RCEs were filed in FY2008 and FY2009.
Kappos’ memo notes a change in procedure that RCEs will now be placed on an examiner’s “Special New” application docket. This is the docket that includes continuation and divisional applications. Under the new procedure, which takes effect for RCEs filed after November 15, 2009, examiners will certainly have much more time to act on RCEs. Although I’m not sure what the typical time to a first office action on continuation or divisional applications is, I guarantee you it is much greater than two months, probably closer to one year. These applications are, however, taken up much sooner than a newly filed application.
This new docketing procedure, along with the recently approved changes to the count system, are meant to discourage RCE filings. For situations where examiners seem to encourage or almost require an RCE in order to allow an application, I favor changes to discourage such behavior. Incentivizing earlier action on applications and trying to address issues at an earlier stage in the prosecution are laudable goals to help reduce pendency and the PTO’s application backlog. There are times, however, when an RCE is warranted and necessary. It doesn’t seem right to delay the prosecution for a year in such cases.