Last week, the PTO published a notice in the Federal Register requesting comments on Request for Continued Examination (RCE) practice.
The notice indicates that the PTO has a backlog of 90,000 patent applications that have not been examined since the filing of an RCE. The notice propounds 11 questions for which it solicits comments:
(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?
I applaud the PTO for taking the initiative to ask its constituents for input on RCEs rather than simply instituting new rules that may be ineffective. I’m just not sure the issue is as large as the PTO perceives it to be. If examiners would do more complete first examinations, and more importantly, consider amendments after a final office action, there would certainly be less need to resort to RCEs.
The comment period for these questions runs until February 4, 2013.