Slowing Down RCEs and Lengthening the Patent Term

In a prior post, I discussed the USPTO’s planned docket-change for applications associated with a request for continued examination (RCE). See Nudging Against RCE Filings. According to the RCE Docket proposal, when an applicant files an RCE, the pending application will be taken off the examiner’s in-prosecution docket and placed in the “special-new” queue that is primarily filled with continuation applications. This new approach will result in RCE’s being handled much more slowly.

The graph below is a rough-cut attempt to compare the “special-new” queue with the RCE queue. The data comes from a set of eight thousand randomly selected patent applications filed 2001-2006 whose file histories have been made public on PAIR. The graph shows three groupings or application scenarios and the average delay from applicant filing to the receipt of a first office action for each. In my sample of continuation applications, the average PTO delay in mailing a first office action was a bit over six hundred days. On the other hand, after receiving an RCE, the average PTO delay in issuing an office action was less than three months.

The proposed change docket-change would essentially take the RCE group and combine it with the continuation group – likely adding over 18-months delay to RCE processing. As Scott Kamholz suggested, this will likely lead to a patent term adjustment (PTA) “bonanza.” This may become a favored approach for applicants looking to extend their patent term. Submarine anyone?

Because of the large sample size, the differences in delay between the groupings are all significant (P<.01). However, there are a number of potential confounding factors – perhaps most notably is a selection bias associated areas of technology. I did not correct for those potential problems in this rough-cut.

UPDATE: The following comment comes from a PTO Insider:

The difference here is the initial docketing to examiners. An RCE will cause the application to be automatically redocketed to an examiner’s Special New tab immediately once the LIE processes the RCE. Continuations, on the other hand, are not automatically docketed to examiners in this fashion, hence the pendency on the same order as normal non-continuation filings. Most of this time (after pre-exam) is spent on a SPE docket or no docket at all, awaiting eventual docketing to an examiner, just like normal non-continuation apps. While it’s likely that RCEs on the Special New docket will increase the time to next action for those cases, it won’t be anything even remotely comparable to 600+ days.

48 thoughts on “Slowing Down RCEs and Lengthening the Patent Term

  1. 48

    Noise above the law: In the words of Emily Litella, “Never mind”.

    Agreed. Not sure what Dennis is referring to with (b)(1) and (b)(2), or what Red Monkey is referring to with 135(b)(1) and (2), at least insofar as the PTA bonanza assertion goes.

    RCEs are not applications, and any time from filing of the RCE to patent grant date will not be credited to the PTA. Continuing applications, on the other hand, are applications, although for them the PTA clock is reset.

    So, getting back to “PTA? | Oct 27, 2009 at 03:11 PM” comment, how does the PTO’s change in docketing of RCEs, and the expected 18 month delay to processing it will cause, translate into a PTA bonanza?

  2. 45

    ““we clearly need to make a point that we’re not going to insult any part of our constituency”
    – Regarding an unpleasant interaction an applicant’s representative had with an examiner –and asking if customer service training was going to be part of examiner training – PRICELESS. 6 and Malcolm will have to start learning how to sing different tunes here at the Trainwreck.”

    I’ll be insulting JD till my dying breath or until he cleans up his act. Same with you ms in the morning the married wolves howl.

    But then again, neither of you are part of any constituency of any homeless people on the side of I-95, so it doesn’t really matter.

  3. 44

    “- Wow the Office wants to serve us, the IP community. No wonder 6 has been in such a foul mood – his man-crush x-leader Dudas has been replaced with someone who keeps on agreeing with the patent bar.”

    What’s that you say? Someone with no balls? Oh I’m sorry, that’s what it sounded to me like you said. Maybe you could repeat yourself.

    “…“dysfunctional’ that there was no penalty for rejecting application claims while there was a penalty for allowing claims that a superior examiner subsequently determines should not have been allowed.
    – Why this is exactly the patent bar’s complaint against Type II errors that Malcolm refuses to acknowledge. Dysfunctional indeed.”

    MM might have feelings about this or that, I don’t care either way. The sig examiner signed off on the action. If they choose to in some way implicate me in his sending out an action then I’ll feel free to find another job. The recession isn’t of any concern to someone about to start lawlschool.

  4. 43

    there are going to new guidelines about working on special new/regular new cases in order–if you want to examine a case filed over 6 months earlier than your oldest case you need to get supervisor permission. now, this will probably not be enforced because it is way too much effort for the supervisor. however, I have 43 cases (con, cip, div) already on my special new before any RCEs are docketed there. that means i might have to get through 43 cases before even thinking about acting on RCEs. that will take me at least 10 biweeks to get there if I am also allowing or abandoning ~2 cases per biweek. I imagine this is even longer for more senior examiners. I like working on RCEs right away because I am already familiar with case/args/most relevant prior art. This could really backfire when there is still NO incentive to enter amendments after final even when they could lead to allowance.

  5. 42

    The per-examiner statistics sound useful – if we know the examiner has a track record of never allowing, we can forget about RCEs & go straight to appeal.

  6. 40

    wrong path? how about wrong forest:

    “PTA – (b)(1) stops accumulating with the filing of an RCE, but (b)(2) does not stop.

    Posted by: Dennis Crouch | Oct 27, 2009 at 03:17 PM”

    We are talking about RCE’s, correct?

    37 CFR 1.702 (b) …but NOT including
    (1) Any time consumed by continued examination of the application under 35 U.S.C. 132 (b);

    37 CFR 1.703 (b) …but not including…
    (1) The number of days, if any, in the period beginning on the date on which a request for continued examination of the application under 35 U.S.C. 132 (b) was filed and ending on the date the patent was issued;

    (b)(2) in both 37 CFR 1.702 and 37 CFR 1.703 deal with interferences, not RCE’s.

    In the words of Emily Litella, “Never mind”.

  7. 39

    “Clearly the amount of time a case spends on the special-amended tab depends on the examiner. Are there any surveys out there that collect and offer for sale per-examiner statistics?

    Posted by: curious | Oct 28, 2009 at 09:41 AM”

    I did not write this posting. Somebody “borrowed” my moniker.

  8. 38

    Patent Attorney: “RCEs are used to give the Examiner another count before they allow it.”

    RCEs have nothing to do with allowing a case.

    “Thanks for showing what we all knew”

    Bet you knew that already!

  9. 37

    @Jules (10:10 AM): Thanks for clarifying.

    @Patent Attorney (10:05 AM): I was not responding to you, who apparently know the answer. It’s for the poster who asked the question.

  10. 36

    curious, get your thick skin ready…

    curious does not usually choose his/her words carefully, a crippling defect I would think for an attorney. That forces others to assume what he/she is trying to communicate, or alternatively he/she could simply be ignored. In this case, yapex, you might safely assume curious meant “Special New” instead of what you did assume, which is that he/she was speaking literally.

    And curious, you respond to your point, I offer what I said in a related post… “you could roughly base it on whether the examiner is junior vs. experienced, junior will get to it quicker”. That is because a junior’s docket is not as mature, so they have fewer special new cases. That means they will get to any given special new case quicker.

  11. 35

    Thanks for showing what we all knew but didn’t have the data to back it up.

    RCEs are used to give the Examiner another count before they allow it. The system is messed up.

  12. 34

    “Clearly the amount of time a case spends on the special-amended tab depends on the examiner.”

    Examiners have 10 days to act on any case in the Special Amended tab, which covers any Applicant’s response after prosecution is supposed to have been closed, e.g., amendments after final, submission of new IDS after NOA.

  13. 32

    Clearly the amount of time a case spends on the special-amended tab depends on the examiner. Are there any surveys out there that collect and offer for sale per-examiner statistics?

  14. 31

    ‘”PTA – (b)(1) stops accumulating with the filing of an RCE, but (b)(2) does not stop.”
    Is that true? 135(b)(2) says A and B delays can’t overlap and you only get the longer of the two (what “overlap” means is the subject of Wyeth). I don’t think it makes the B delay any longer than it says it is in 135(b)(1).’

    The PTA provision in discussion could be: 37 CFR 1.702(a)(2) – 4 month take action req’t. This would cover RCE’s, I believe.

  15. 29

    “If he doesn’t he’ll just sht all over the interview anyway.”

    6, in case you missed this from another Trainwreck thread (note especially the customer service angles):

    What a nice gift in my mailbox today – the BNA’s Patent, Trademark and Copyright Journal Volume 78, Number 1938.

    Why look here, some coverage of the October 15th AIPLA conference with the new Lord and overseer of the minions 6 and Malcolm. Let’s see what Lord Kappos has to say:

    …“dysfunctional’ that there was no penalty for rejecting application claims while there was a penalty for allowing claims that a superior examiner subsequently determines should not have been allowed.
    – Why this is exactly the patent bar’s complaint against Type II errors that Malcolm refuses to acknowledge. Dysfunctional indeed.

    Recent court decision re the over rigorous standard in trademarks concerning fraud was a positive development. The previous administration had too broad an interpretation of fraud on the agency. (paraphrased)
    – I wonder if this mandate will effect the patent side.

    “we clearly need to make a point that we’re not going to insult any part of our constituency”
    – Regarding an unpleasant interaction an applicant’s representative had with an examiner –and asking if customer service training was going to be part of examiner training – PRICELESS. 6 and Malcolm will have to start learning how to sing different tunes here at the Trainwreck.

    And finally:

    “I welcome your feedback; it’s really important that we get this right to serve you, the IP community.”
    – Wow the Office wants to serve us, the IP community. No wonder 6 has been in such a foul mood – his man-crush x-leader Dudas has been replaced with someone who keeps on agreeing with the patent bar.

  16. 28

    “When filing an RCE, is the Applicant immediately entitled to an interview with the examiner under the new regime?”

    I can’t say that I know either way. However, I don’t see the point in making any interviews an “entitlement”. Either the examiner wants to have it or he doesn’t. If he doesn’t he’ll just sht all over the interview anyway.

    “does this mean that the RCE may be handled by a different examiner even though the original examiner is still there?”

    All RCE’s go to the same examiner unless some extenuating circumstance happened, just like in the past.

  17. 27

    “PTA – (b)(1) stops accumulating with the filing of an RCE, but (b)(2) does not stop.”

    Is that true? 135(b)(2) says A and B delays can’t overlap and you only get the longer of the two (what “overlap” means is the subject of Wyeth). I don’t think it makes the B delay any longer than it says it is in 135(b)(1).

  18. 26

    “when an applicant files an RCE, the pending application will be taken off the examiner’s in-prosecution docket and placed in the “special-new” queue that is primarily filled with continuation applications”

    does this mean that the RCE may be handled by a different examiner even though the original examiner is still there?

  19. 25

    When filing an RCE, is the Applicant immediately entitled to an interview with the examiner under the new regime?

  20. 24

    pendency for applications that suck will increase, pendency for applications that can be allowed on or soon after FOA will decrease

  21. 23

    hotelingexaminer

    so, the pendency time will not decrease (in fact, I contend it will increase) but the time to FOA will/may decrease?

  22. 22

    “The proposed change docket-change would essentially take the RCE group and combine it with the continuation group – likely adding over 18-months delay to RCE processing.”

    What are the advantages to this change from the PTO’s perspective?

    from my seat, it appears to me to be a ploy to merely encourage reduction in the backlog, but won’t really reduce pendency (i.e. Examiner’s obviously will be more likely to work on a brand new case before an RCE case because of the increased counts granted, and because the 2-month workflow requirement is essentially eliminated) – from the PTO’s perspective, reducing the backlog would be a “major” PR boost (for whatever that’s actually worth)

  23. 21

    My iPhone clearly doesn’t recognize the word “docketing” – although we may be dickering over RCEs under the new procedures. . . .

  24. 20

    According to a notice on the PTO website the RCE dickering change will take effect Nov 15, so it’s more than just “proposed” at this point.

  25. 17

    With respect to submarine patents . . . it is really an issue of law industry economics. Specifically, the real issue there is the disparity between the compensation of patent prosecutors and patent litigators. If patent litigators were paid commensurate with patent prosecutors many of the submarine patents could have been analysized and litigated for a reasonable cost-resulting in many being found invalid. Alternatively, if patent prosecutors were paid the wages of patent litigators it would be cost prohibitive to file too many submarine patents.

  26. 16

    Mr. Morgan:
    Is not the proposal the same as an old Rule 60 streamline continuation, excepting of course there is no change in application number? Man ‘ol man . . . the more things change . . . well you know the rest of the saying.

  27. 15

    Well Dennis:
    Your board is very useful. At least now the Feds are beginning to understand the Takings issues with respect to dilatory action on the part of the USPTO.

  28. 14

    Dennis,

    Is there anyway you can get stats from pre-GATT for FWCs (basically the functional equivalent of what RCEs are now for you youngsters)? I know that we also didn’t have PTAs pre-GATT, but the info would be useful. Maybe even enlightening for many.

    Back then, FWCs were also put on the special new docket just like RCEs will be now & it didn’t seem that there was any big deal being made about delays getting them examined. Of course, they wasn’t much in the way of blogs and we didn’t have PTAs so there wasn’t lost terms to worry about. Just an idea.

    MVS

  29. 13

    The more I think about it — it appears that the PTO is just shuffling the deck chairs on the Titanic.

  30. 12

    This change pushes more of the applications receiving final rejections into the over-loaded appeals basket.

    I hope that the PTO is increasing (doubling) the size of the BPAI to handle these new appeals as well as the large backlog.

  31. 10

    I’m not sure that equating an RCE with a continuation as filed is appropriate. For example, a continuation has to go through the entire docketing process, including preliminary inspection and notice of missing parts, etc. It then goes through the docketing chain, including the SPE and finally getting to the Examiner. This is all time that won’t be required in an RCE, because it will not have to be redocketed and won’t have to go through the OIPE process. Additionally, once in the special new folder, there is nothing preventing the examiner from working on it earlier. Back in the day, once the Special New was docketed it only took a few bi-weeks to finish.

  32. 8

    What this does essentially is disincentivizes applicants AND examiners from using the RCE as a vehicle to avoid getting down to the hard work of figuring out what it will take to get an application allowed.

    Examiner’s cannot now parlay poor examination into instant additional counts. By pushing RCE’s to a special new docket, I wonder if the same examiner will even get the case.

  33. 7

    The difference here is the initial docketing to examiners. An RCE will cause the application to be automatically redocketed to an examiner’s Special New tab immediately once the LIE processes the RCE.

    Continuations, on the other hand, are not automatically docketed to examiners in this fashion, hence the pendency on the same order as normal non-continuation filings. Most of this time (after pre-exam) is spent on a SPE docket or no docket at all, awaiting eventual docketing to an examiner, just like normal non-continuation apps.

    While it’s likely that RCEs on the Special New docket will increase the time to next action for those cases, it won’t be anything even remotely comparable to 600+ days.

  34. 6

    “The proposed change docket-change would essentially take the RCE group and combine it with the continuation group – likely adding over 18-months delay to RCE processing.”

    What are the advantages to this change from the PTO’s perspective?

  35. 4

    “As Scott Kamholz suggested, this will likely lead to a patent term adjustment (PTA) ‘bonanza.'”

    Dennis – I think that PTO delays stop accumulating once an RCE is filed. 37 CFR § 1.702(b)(1) and § 1.703(b)(1). Therefore, I don’t see the PTA bonanza. Am I interpreting this wrong?

  36. 3

    35 USC 154(b) seems to distinguish between “a reply under section 132” and “time consumed by continued examination of the application requested by the applicant under section 132(b)”, giving the PTO at least an arguable statutory basis for barring submarine ops.

  37. 2

    There are relatively relaxed standards for working on continuations and other cases in the “Special New” docket. I am guessing that once RCEs are put in this docket, the standards will be made more strict, i.e. solidified in the PAPs (Performance Appraisal Plan).

    The keyword there was “guessing”. Sometimes I will actively seek out information and other times I will adopt the wait-and-see approach. This is one of the wait-and-sees.

  38. 1

    Thank you for proving that old-fashioned continuations [besides requiring more paper-work and a whole new application file] on average delay patent prosecution six hundred days, versus less than three months for RCE’s. That point was repeatedly made to the prior PTO management, which they repeatedy ignored or denied, especially in their illogical rules package provision allowing two old-fashioned continuations but only one single RCE.

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