After an applicant files a patent application, he receives an Office Action from the patent examiner. The applicant generally responds to any rejections by filing an Amendment with claim amendments and arguments. He may also cancel claims or add new claims to the application, provided that the new claims are supported by the original disclosure in the application and do not add “new matter.”
The examiner will then review the Amendment and issue a Notice of Allowance or a Final Office Action. A Final Office Action would include the examiner’s response to the claim amendments and arguments. It would indicate which rejections are still applicable and which have been overcome.
After a Final Office Action, an applicants options are more limited. He can always file a Notice of Appeal, file a continuing application, or file a Request for Continued Examination (RCE). The first option is very expensive and time-consuming given the backlog at the Board of Appeals, while the latter options abandon the application (in the PTO’s view) in favor of the continued prosecution. It can mean that the application is sent back into the examination queue meaning that it could be a year or more before the examiner considers the case again.
There are limited prosecution options available to an applicant after a Final Office Action. He could cancel any rejected claims and permit allowed claims to issue. He can usually amend an independent claim to add limitations from allowable dependent claims. Examiners, however, have broad latitude to refuse to consider most amendments made after a Final Office Action on the grounds that the amendment “raises new issues” or “requires additional search.” As in all aspects of patent prosecution, some examiners are reasonable about this and others are not.
Thus, applicants are sometimes forced into filing RCEs, which creates the current problem of a huge RCE backlog.
Examiners are not all to blame for these problems. The system provides them with incentives to not consider amendments made after a Final Office Action. Examiners get credit for initially examining an application, for issuing a Final Office Action, and for a Notice of Allowance or an abandonment by the applicant. As noted above, a continuation or RCE filing are considered abandonments by the PTO. Thus, requiring applicants to file RCEs gives the examiner more credit toward examination goals.
Further, patent applications and claims are sometimes not ready or in good shape at the time of the initial Office Action. This means that only after filing an Amendment are the claims placed in good shape by the applicant. In that case, the first Office Action is not helpful to advancing the case and can cause the delay in prosecution. Sometimes applicants are a bit intransigent until after receiving a Final Office Action. Applicants are sometimes to blame for delays in prosecution.
The PTO is now proposing an After Final Consideration Pilot program during the third quarter of FY2012 (April-June). After a Final Office Action, the PTO will give examiners up to 3 hours of non-production time to consider issues and perform searches for utility and plant applications and up to 1 hour for design applications. Examiners are encouraged to use their professional judgment to determine whether the nature and extent of amendments and arguments can be fully considered within this time period. This should encourage a bit more flexibility and negotiation between examiners and applicants after a Final Office Action.
The goal is to provide more compact prosecution and to reduce the number of RCE filings. This seems to be a good way to attempt to solve this issue.
HT: IP Watchdog.