The chart above shows Requests for Continued Examination (and the earlier CPA/R129 processes) as a percentage of the total number of non-provisional patent applications filed each year.
Notes: The denominator here does not include RCE filings but does include continuations and CIP filings. Thus, the calculation is: (Number of RCEs)/(Number of Non-Provisional Filing). The denominator does include plant & reissue applications, but those numbers are negligible.
“but he doesn’t need to reject anything other than what is claimed.”
I was under the impression that only claims can be rejected, and that any other isue witht eh application falls into the “objected” category.
I think “doing it right the first time” implies the process of filing a broad claim, followed by a rejection using the *best* art an examiner can find to reject both the claims and the general nature of the invention, followed by a substantive amendment narrowing the claim to obviate the art rejection.
I think “doing it right the first time” implies drafting at least one claim to the general nature of the invention. The examiner should be reading the spec to inform his reading of the claims, but he doesn’t need to reject anything other than what is claimed. In any event, many applications contain more than one patentably distinct invention, as examiners are eager to point out. They shouldn’t have to guess at what wasn’t claimed but might have been.
Never forget whose job it is to particularly point out and distinctly claim what he regards as the invention.
“If you use new art in the final office action, that is going to result in an atty wanting to amend. I’m not sure why that would be the atty’s fault.”
Not all RCEs are filed with amendments and not all RCEs are filed because new art was applied by the examiner on the final rejection.
I think “doing it right the first time” implies the process of filing a broad claim, followed by a rejection using the *best* art an examiner can find to reject both the claims and the general nature of the invention, followed by a substantive amendment narrowing the claim to obviate the art rejection. Since no better art exists, the claim is allowed. Of course, given myriad obstacles, “doing it right the first time” is virtually impossible. “Doing it right the first time” does not mean drafting an allowable claim on the first submission.
Funny 6 – I seem to recall that Ron’s efforts (along with Bundy’s and the good doctor Tafas) amounted to much more than same ol’ same ol’.
link to journals.lww.com
there is the worthless Katznelson article “on” RCE’s. The man is a re tard who seemingly can’t get enough of looking at whatever small things are wrong and just keeps harping on the same ol’ same ol’. He’s just parroting the nonsense he peddled here for so long. Nothing new that I can spy.
“In every case (save one), it was because the atty wanted to add some sort of substantial change after a Final office action.”
If you use new art in the final office action, that is going to result in an atty wanting to amend. I’m not sure why that would be the atty’s fault.
I’m an examiner that’s been working for about a year and a half now. I’ve had 6 RCE’s filed.
In every case (save one), it was because the atty wanted to add some sort of substantial change after a Final office action. This whole “Do it right the first time” applies to both sides.
I do my best to comply with ideals of compact prosecution even if it delays my counts. I think RCEs are avoidable (which is the goal with this new count system), only if it is clear what the Applicants are truly seeking and what they really think the invention is, if there is one. I’ve avoided 2 RCEs because it was clear what made the case allowable and that there was allowable subject matter.
Believe me, I’d rather have an allowance/dispose of a case than get an RCE.
Ditto DC’s comments,
plus I’ll add that my reference of “do it right the first time” re: (presumed above to being “doing the job right the first time”) was not in relation to any choice of broad claiming first or narrow claiming first but more so in relation to the quality of the examination. Examiners are directed to (both by MPEP and case law) read both the claims and the specification – courts have explicitly stated that the claims must be read in light of the specification (for all the nuance nuts out there).
MP – you be a bit over reacting.
For Midwest Practictioner:
I think couching this in terms of ethics is too strained. You suggest that ethics compels you to pursue broad claims in the initial application. Since I disagree with this approach, do you think I should suggest that you are unethical? I presume you are ethical, and have come to believe that filing broad claims first is a good idea in light of your experience with your clients. However, I think good practice in many, if not most, if not nearly all, cases dictates that you pursue “unnecessarily narrow claims” in the parent application. Part of your advocacy is to avoid choking your own client on the estoppel arising from the practice of filing broad and cutting back (some attorneys have told me they can control the estoppel effects of their amendments, LOL). By pursuing narrow claims first, and then pursuing broader claims in a later continuation, you can limit the estoppel with broad claims prepared in light of what the examiner thinks is important, educate the examiner to avoid ill-informed rejections, get an early (though narrow) patent to support investment, and maintain pendency to account for design-arounds, emergent art, and maybe even develop some secondary factors. But if your client can only afford one round, perhaps you might be stuck filing broad claims and dealing with the consequences. SOOO, back to my point: To suggest that ethics dictates one path to the exclusion of others is too strident. Otherwise, we will all be looking at each other as unethical jerks. God help us if the PTO sides with either one of us on the basis that ethics dictates your strategy or mine.
Midwest, I see your point about wanting broad claims. However, I don’t understand why you would want to write a claim set that results in every single claim in that claim set being properly rejected on a first action.
If you do file such a claim set, and the examiner properly rejects all the claims, then you have to amend the claims, resulting in the estoppel under Festo that you say you have an ethical oblication to avoid. How does that help your client or satisfy your ethical obligation?
Also, the only time the examiner would make a proper final rejection to your claim set is if you either failed to overcome the initial rejection, or your added a limitation to the independent claim from the specification, rather than from a previously presented dependent claim. In either case, if the final rejection is improper, you can make this argument to the examiner or appeal.
If, instead, you filed an rce, you would have to amend the claims yet again in order to qualify for the rce. If the final rejection really was improper, and you amended anyway just to be able to file an rce, you are again unnecessarily narrowing the claims and therefore breaching your advocacy obligation to the client.
I don’t really see what ethical obligations are lost or not appreciated by some of the above commenters.
The legal ethical obligations of an attorney to a client is apparently lost or not appreciated by some of the above commenters/examiner advocates. A patent attorney has an obligation to his client to advocate for the client’s rights under patent law that is not black and white, and that is constantly changing, and that applies to technical facts/analysis and term interpretation. This includes presenting the client’s case with persuasive force and not forgoing potential claim scope unless instructed by the client after counseling. Claim scope is a potential right of a client and as attorneys we are obligated to advocate for as broad of scope as possible under the law. Preparing a claim set that is allowed on a first office action (presumed above to being “doing the job right the first time”) always raises the ethical issue of whether you initially filed for unnecessarily narrow claims and therefore breached your advocacy obligation to the client. Prosecution practice has also been affected by the 2002 Festo decision and the examiner’s/PTO’s change to automatically making the second office action final even when based on newly presented references for which the client has never been able to make a response or prepare amendments to the claims. Both of these mid-2000 changes have resulted in the increase in RCE filings under these advocacy obligations. To do less or otherwise, and to add in unnecessary limitations to a client’s claims when you and your client do not agree with the examiner’s rejections or interpretations of the prior art may be a breach of the ethically rules. As such, our clients file more RCEs/continuations/divisionals and we continue to advocate for their rights for as broad of claim scope possible under the law.
I love this. There’s a great new article about RCEs by Ron Katznelson. For whatever reason, Dennis doesn’t want to link to it.\
I don’t see an article on RCE’s by anyone there. The Katznelson article on patent reform is a good read though.
“I move that we all call the above graph “The Dudas Curve” from now on”
Everything is the fault of the previous administration. The oil spill, the increase in unemployment, and now the increase in RCEs.
Can’t you think of any new talking points?
PharmaPatents–we’re also filing RCEs because of McKesson and further because there has been a rash of references getting crossed off for not including the “author” of an Office Action. I wouldn’t mind if it made sense or if it actually interfered with the Examiner’s ability to consider the reference, but obviously it doesn’t. So PTO, if you’re wondering about this particular category of RCEs, take a look in the mirror–fixing it is one quick rule change away.
I move that we all call the above graph “The Dudas Curve” from now on.
um, shouldn’t final rejections be based on the material of the application, rather than the attorney?
Not when the attorney wants to get an RCE or three filed to rack up more fees.
Jonathan W. Dudas served as Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) until January 18, 2009. [1] He was nominated to the position by former President George W. Bush in March 2004 and appointed in July 2004. Dudas previously served as acting Under Secretary and Director, and Deputy Under Secretary and Deputy Director from 2002 to 2004.
…curve looks about right to me…
I love this. There’s a great new article about RCEs by Ron Katznelson. For whatever reason, Dennis doesn’t want to link to it.
link to journals.lww.com
That’s certainly his prerogative, but it undermines this site as being even someone objective about reporting on patent news.
“ So how’re those count system changes working out for ya??”
You tell me mizz palin, that mountain of lower credit work is aheadin for your docket. Weza poor attorney folk still be gettin paid the same for striving vigilantly for the rights of our clients.
Maybe that great union ‘o yours POPA will help ya out?
Iza still haven’t heard any news on teh new examining the examiner metrics. How those be working out for ya??
“Eventually the RCE backlog isn’t going to be much shorter than the appeals backlog…”
True dat btches – – So how’re those count system changes working out for ya??
I’ve only gotten one appeal brief in the last 18 months or so. Eventually the RCE backlog isn’t going to be much shorter than the appeals backlog…
Sometimes we have to file RCEs to submit an IDS driven by McKesson. Even if we think our response will result in an allowance, we have to file an RCE to submit references/Office Actions from co-pending applications.
“6 – honest question here. I deal with an examiner in a small art unit who has issued 14 answers in the past year. This is extraordinarily high, yes? (I’m not commenting on the reasons as to why, just want to confirm this is not the norm)”
It surely is for my AU, but I can’t speak to that AU.
ping: “um, shouldn’t final rejections be based on the material of the application, rather than the attorney?”
That would presuppose that the attorney has nothing to do with what’s in the application.
Although I have wondered about this from time to time….
6 – honest question here. I deal with an examiner in a small art unit who has issued 14 answers in the past year. This is extraordinarily high, yes? (I’m not commenting on the reasons as to why, just want to confirm this is not the norm)
The backlog before the Board is horrendous, taking many years before a decision is reached. Thus, for many inventions where “immediate” patent protection is commercially important, my guess is that RCEs will continue to be heavily used where agreement cannot be reached after final.
um, shouldn’t final rejections be based on the material of the application, rather than the attorney?
if the attorney cant do his job, then I have to make a final rejection
if the examiner cant do his job, then I have to file an rce
“Isn’t 2004 about when the PTO reject-reject-reject policy started?”
Why won’t those damm customers just go away?
Isn’t 2004 about when the PTO reject-reject-reject policy started?
So, is the percentage growth driven purely by the rise of continuations, or is there ongoing decline in new utility applications?
Dude, the number of continuations is in the denominator. So it’s pretty clear that the percentage growth is not driven “purely by the rise of continuations.”
Since I don’t think overall filings have dropped over the last decade, I think it’s safe to assume that the percentage growth might be driven by a growth in RCE filings, since that’s the number in the numerator.
The rise is no doubt in large part due to the BPAI backlog. More and more people will just file an RCE. I haven’t had an appeal brief filed in I don’t even know how long. Nearly a year? At least 7 mo. Knock on wood lol.
Ping, maybe if you’d do the job of drafting right the first time they’d do the examination right the first time. But since the first will never happen we’ll never know if the later could happen. Likewise with you Sarah.
Otherwise, as seems to happen often around here, the numbers are meaningless.
I think the trend is indisputable.
NumberCruncher,
And what exactly would that normalized number tell you?
I’m not sure why you want to “normalize” by a changing number, especially as the RCE is not pegged to any given year (and can occur at a wide range of years following its original application filing date).
I assume you have a logical premise – I just don’t see it (so I’m really not trying to be a smart-_ss – this time).
Since the number of RCEs for year 2010 is a function of RCEs filed in applications filed in previous years, this data should be normalized by the percentage increase in the overall number of new application filed each year. Otherwise, as seems to happen often around here, the numbers are meaningless.
If it was done right the first time. my Life would be my own, and I would not have lost 15 Years of it fighting Boogey Men, Felons, and Scummies.
Do the job right the first time.
So, is the percentage growth driven purely by the rise of continuations, or is there ongoing decline in new utility applications?
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