IEEE Comments on RCE Practice

ieeeusa-logoIn December, the PTO requested comments on RCE practice.  Specifically, the PTO asked for comments on 11 questions.  The Institute for Electrical and Electronics Engineers (IEEE) submitted a detailed response that includes a proposal to reduce the number of RCE filings.

A large portion of the comments relate to proposed changes to the PTO’s “count” practice of rewarding examiners for piecemeal production.  Instead, the PTO should provide incentives to examiners to bring examination to a conclusion.  The practice of “churning” RCEs has become quite common under the PTO’s current incentive model.

The PTO should continue efforts to ensure that examination is complete at the earliest stages of prosecution and provide incentives for second non-final office actions when warranted.  Under current practice, the PTO is strongly discouraging second non-final office actions.  This causes examiners to prematurely issue final office actions at times when they are not warranted.

The PTO charges applicants a higher fee when the application includes a greater number of claims, as well as a longer application with a greater number of pages.  The PTO should similarly provide examiners with greater incentives when they examine applications of greater complexity.  Under the current system, examiners receive similar credits whether they examine simpler applications or more complex applications.

The PTO should provide greater transparency in the process.  Examiners should be required to address each claim limitation in detail when writing rejections and should be required to address every argument submitted by the applicant.  Perfunctory rejection explanations and simply indicating that the applicants arguments “were not persuasive” does not meet this standard.  This would provide an earlier meeting of the minds between applicants and examiners to more efficiently conclude the examination process.  Similarly, the PTO should require participants in Pre-Appeal conferences to provide written explanations for rejections submitted to the Board of Appeals.

Examiners should suggest amendments and point to potentially allowable subject matter during prosecution.  This would also increase examination efficiency.

A summary of the specific IEEE suggestions include:

o IEEE-USA believes that the PTO’s “count” and “production unit” metrics and compensation systems are counterproductive, as we discuss in Attachment A, § 2.2 starting at page 18.

o RCEs would decline if the examiner “count” system were modified to reward examiners for concluding examination, not extending it, as we discuss in § 2.3 starting at page 19.

o RCEs would decline if examiner counts were scaled with application complexity, as we discuss in § 2.4 starting at page 19.

o RCEs would decline if supervisor compensation metrics were recalibrated to incentivize efficiently concluding examination, as we discuss in § 2.5 starting at page 21.

o RCEs would fall if the 2009 redocketing of RCEs were rescinded, as we discuss in § 2.6 starting at page 21.

 37 C.F.R. § 1.104(c) should be revised to state an unambiguous requirement that an examiner must provide a clear written explanation for every material issue, including limitation-by-limitation consideration of claim language (see § 3.1 at page 24).

 The PTO should improve compliance and enforcement of 37 C.F.R. § 1.104(c)(2), requiring precise disclosure of the examiner’s analysis of references (see § 3.2 at page 29).

 The duty to “answer all material traversed” is a near-absolute obligation set by the Administrative Procedure Act, 5 U.S.C. § 555(b), not a “should” recommended practice—MPEP § 707.07(f) should be revised to clarify that duty, and that no Action may be made final if there is any failure to answer an applicant’s argument (see § 3.3 at page 29).

 The PTO should set clear and enforceable standards for completeness required for final rejection and to survive Pre-Appeal. Any omission in a purportedly-final action (omission of claim language, omission of an element of a required legal showing, etc.) should prevent final rejection, and should result in per se grant of reopen on Pre-Appeal (see § 3.4 at page 30, and Attachment C).

 RCEs would be reduced if Pre-Appeal conferees were required to provide a written explanation of all grounds referred to the Board, not a single all-or-nothing “X” (see § 3.5 starting at page 32).

 The PTO should add a fair restatement of the Federal Circuit’s definition of “new ground of rejection” to the MPEP, and enforce standards for premature final rejection (see § 3.6 at page 32 and Attachment D).

 RCE’s would be reduced if the petitions process were a reliable way to seek enforcement of the PTO’s regulations governing its own conduct. The petitions process is not reliable. One source of that unreliability would be removed if the PTO included a written statement of the scope of petitionable subject matter jurisdiction, as we recommend in § 3.7 at page 38, and in Attachment E).

 The PTO should reiterate to its employees that obligations of PTO employees stated in the MPEP are binding on and enforceable against examiners, and waiver requires formal clearance—there are no on-the-fly exceptions (see § 3.8.1 at page 39).

 RCEs would be reduced if the rejection form paragraphs were updated to provide more “handholding” (see § 3.9 starting at page 46).

 MPEP § 2144.03(C) creates unwarranted RCE’s and delay by misstating the law of intraagency Official Notice—Official Notice is adequately traversed by simply “calling for” substantial evidence under 37 C.F.R. § 1.104(d)(2) (see § 3.10 at page 46).

 37 C.F.R. § 1.111(a)(2) should be returned to its pre-2004 state, allowing supplementary amendments until they would “unduly interfere” with examination (see § 3.11 at page 49).

 MPEP §§ 2106(II)(C) and 2111.04 should be corrected to accurately state the law and give ascertainable standards for certain “questionable” claim language (see § 3.12 at page 51).

 RCEs would be reduced if the PTO published its internal examination memoranda (see § 3.14 starting at page 54).

 The PTO should improve supervisory enforcement of existing guidance and regulations (see § 4 starting at page 55).

 The PTO should implement the Good Guidance Bulletin issued by the Executive Office of the President in 2007 (see § 5 starting at page 57). IEEE-USA has brought this directive to the PTO’s attention on several occasions—IEEE-USA is surprised at the PTO’s continued failure to implement a directive issued on the authority of the President, especially when the Bulletin sets procedures and policies that would advance the goals the PTO professes to seek.

 RCE’s would be reduced if the “in process review” metric were improved and made more transparent (see § 6 starting at page 58).

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