Here We Go Again

In 2007, the PTO attempted to jam through a set of rules that would severely limit the number of claims in patent applications and that would severely limit the number of Requests for Continued Examination (RCEs) and continuing applications.  After a long, protracted fight where a court determined that the PTO did not have authority to implement such rules, the new PTO administration realized the error and dropped the rules.

The new PTO administration under Director Kappos believed that the problem with too many RCE filings is the fault, at least in part, of the examiners.  The PTO sought to assuage the problem of too many RCE re-files by making it less advantageous to examiners to churn applications.  This change was implemented by count reform where examiners get less credit for examining RCEs than for new applications.  Unfortunately, it does not appear that RCE filings have been reduced in any appreciable way.

It must be time to eliminate RCEs by statute!  Cecil Quillen, Jr., an IP Institute Research Fellow at the University of Richmond and former general counsel of Eastman Kodak, advocates this position in a letter to the editor of the New York Times (although he did not appear to write the letter on behalf of his current or former employer).

In his letter, Mr. Quillen argues that the problems at the PTO are not the result of insufficient number of examiners or inadequate funding.  Instead, he believes that the practice of patent applicants “refiling” patent applications is the problem with the U.S. patent system as it imposes so much rework on the patent examiners.  He cites statistics that 42% of applications filed during FY2010 were simply re-filed applications.  Elimination of re-filed applications will increase PTO resources for original applications by more than 70% without the need to hire additional examiners and will increase patent quality as examiners will only need to focus on originally filed applications.  The adoption of the Senate patent reform bill, S. 23, will somehow aggravate this problem.

Response

I wonder if banning RCEs and continuing applications will also cure cancer.  If it’s so easy, why didn’t someone else think of this earlier.  Let’s look at some typical cases:

A patent applicant files a new patent application with a set of claims that the applicant believes to be novel and non-obvious, and important to its business.  Some time later, the applicant receives an office action.  The applicant still believes that the invention is patentable as written and uses arguments and amendments to convince the examiner to that effect.  Given our US adversarial system, we are told to fight for what we believe we are entitled to.

The examiner issues another office action, usually final, where the rejections are now more focused and the issues are narrowed.  The applicant now agrees to narrow the claims.  The examiner, however, indicates that such claim amendments “raise new issues” and won’t be considered after a final office action.  In such cases, the applicant has no choice but to file an RCE to get the examiner to consider these amendments.  Under Mr. Quillen’s system, the application must instead be abandoned.

By the time the examiner reviews the RCE, he does not have to “re-work” the application from scratch.  He has already done a search (although it may need to be updated).  The issues have been focused and narrowed.  He is not working on a blank slate.  Thus, examiners should get less credit for examining RCEs; they don’t require as much work as original filings.  I don’t know where Mr. Quillen got his 70% number, but it is clearly an exaggeration.

Or, perhaps the applicant had amended some of the claims after the first office action, but kept others as originally filed.  The final office action allows some of the amended claims, but not others.  Is the applicant stuck with the allowed claims or can he file a continuing application to continue to prosecute the rejected claims?

The US also has a fairly unique system of requiring applicants to submit material prior art, such as foreign search reports, to the PTO.  The applicant has a duty to submit such information during the entire pendency of the application.  A patent application is pending from the time it is filed until it issues or is abandoned.  Applicants will sometimes get foreign search reports after an application has been allowed.  The only way to get this art considered by the examiner is to file an RCE.  To permit the patent to issue without consideration of the art in the search report would cast a cloud over the patent.  This situation is set to get worse when the Supreme Court changes the standard for challenging patents based on prior art that has not been considered by the examiner.

One answer to these problems is to conduct examiner interviews, early and often, to get applicants and examiners to agree on allowable subject matter early in the prosecution process.  I am a huge proponent of interviews and believe that they nearly always advance prosecution.  That being said, however, too often examiners will be non-committal.  This is especially true for junior examiners.  Junior examiners do not have authority to allow claims without review by a senior examiner or supervisor.  Thus, examiner interviews with junior examiners require a senior examiner with such authority to also be present.  The problem is that the senior examiner has his or her own docket and often is not familiar with the application and issues or prepared for the interview.  Such interviews can be frustrating and maybe even unhelpful.

Situations can also arise where an applicant is required to present evidence to show non-obviousness of the invention.  Such evidence can include comparative data, sales information, third party declarations, and others.  Applicants usually do not know that such information will be required when they first file an application.  Once the issue arises during prosecution, there may not be sufficient time to acquire the information prior to a final office action.  An RCE or continuing application can be filed to permit time to acquire and present this evidence.

It is unclear from his brief letter what Mr. Quillen thinks about restriction/divisional practice.  This is also a form of “re-work” or re-filing that is not the fault of the applicant.

The bottom line is that the patent community was rightfully outraged when the 2007 PTO rules package included a severe restriction on RCE/continuation filings.  I believe that we should work with examiners to reduce RCE churning by permitting some “new issues” to be considered after a final office action.

This is simply another example of using the media to inflame public opinion on a complicated issue by making exaggerated claims.

Patent Prospector also has a response to Quillen’s letter.

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5 Responses to “Here We Go Again”

  1. Tweets that mention Here We Go Again « INVENTIVE STEP -- Topsy.com Says:

    [...] This post was mentioned on Twitter by Rachael Vaughn, Matt Osenga. Matt Osenga said: Here We Go Again http://wp.me/po0Pf-xm [...]

  2. General Global Week in Review 28 February 2011 from IP Think Tank Says:

    [...] Here we go again – Cecil Quillen Jr’s NYT letter to the editor re RCEs (Inventive Step) [...]

  3. S. 23 and Secret Prior Art « INVENTIVE STEP Says:

    [...] is correct about the grace period and secret prior art issues, he continues to cite positively the unsupported letter of Cecil Quillen that simply eliminating RCEs and continuing applications would fix all that ails the patent [...]

  4. Senate Votes to End Debate on Patent Reform Bill « INVENTIVE STEP Says:

    [...] was perfect, a raise in the fees to several multiples of their current levels might make sense.  As detailed earlier, the problem is that examination is not perfect and applicants need the ability to file RCEs and [...]

  5. PTO FY2011 Numbers So Far « INVENTIVE STEP Says:

    [...] that many patents are allowed by forcing applicants to file RCEs that are not allowed initially.  Proposals to simply eliminate RCE filings must first deal with this issue before they can be taken [...]

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