The USPTO is looking for feedback from the public to help reduce their backlog of patent applications associated with a Request for Continued Examination (RCE).  There is currently a backlog of over 103,000 applications related to RCEs.

RCE BacklogYou can see the past two year trend at the USPTO Dashboard.

An RCE is a request by an applicant to reopen prosecution of the patent application after prosecution of the application is closed. That is, after the Examiner closed it by issuing a second action as final thus forcing the applicant to file an RCE in order to be allowed the privilege of responding and amending the claims to get them into allowable condition.

MPEP 706.07(a) governs when it is “proper” to make a second action final. This states that under present practice, “second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims, nor based on information submitted in an information disclosure statement filed during the [time].”

Furthermore, a second or any subsequent action on the merits in any application will not be made final if it includes a rejection, on newly cited art.

This sounds good in theory but really means you get exactly one shot at amending an application after getting the search results and first action on the application.  You have to get it absolutely perfect or you’re in final land.  You don’t get a chance to amend a second time after going over it with the examiner.  Being close doesn’t count.

The real answer here is to give Examiners leeway to have some back-and-forth to get the application right without slamming the door shut with a second action final.  A second action final isn’t some sort of universal truth handed down on a mountain top.  Obviously, the PTO has to stop incentivizing examiners to close prosecution.

The USPTO is asking for input from the public to help understand the reasons for an RCE and to design new programs and initiatives aimed at reducing the need for an RCE.  Note, they have implemented the After Final Consideration Pilot (AFCP) to help somewhat.

How to Help?  Answer the USPTO’s list of 11 questions:

  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 USPTO procedure(s) or regulation(s) would reduce your need to file RCEs?
  3. What effect(s), if any, does the USPTO’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 USPTO 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?

Your answers to some or all of these questions might help.  Feedback can be provided through any of three means:

Your comments or answers to the questions related to RCE practice can be sent to

IdeaScale is a Web-based collaboration tool allowing you to post comments on RCE practice, and view and respond to comments made by others.

The RCE Outreach effort will also include a series of events to share ideas, feedback, experiences, and insights on RCE related prosecution strategies. The following events are scheduled:

  • February 20 – Santa Clara University School of Law, Santa Clara, Calif. – Roundtable from 9 – 11 a.m. PT and focus session from 2 – 4 p.m. PT
  • February 26 – Southern Methodist University, Dedman School of Law, Dallas, Texas – Roundtable from 9 – 11 a.m. CT and focus session from 2 – 4 p.m. CT
  • February 28 – New York University School of Law, New York, N.Y. – Roundtable from 9 – 11 a.m. ET and focus session from 2 – 4 p.m. ET
  • March 6 – USPTO Headquarters, Alexandria, Va. – Roundtable from 9 – 11 a.m. ET and focus session from 2 – 4 p.m. ET
  • March 8 – Chicago-Kent College of Law, Chicago, Ill. – Roundtable from 9 – 11 a.m. CT and focus session from 2 – 4 p.m. CT

The USPTO’s Invitation to Participate in Roundtable and Focus Sessions on RCE Practice provides further information on the above events, including how to participate.

USPTO Extends the RCE Outreach Comment Period

On December 6, 2012, the USPTO published a request for comments in the Federal Register soliciting public feedback in an effort to better understand the full spectrum of factors that impact the decision to file an RCE. The USPTO is extending the comment period to provide interested members of the public with an additional opportunity to submit comments to the USPTO.  The new deadline for receipt of written comments in response to the December 6, 2012 Federal Register publication is March 11, 2013.

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Well, the Patent Baristas website was hacked. Dang! I know everyone says this but I really didn’t think it could happen to us. We’re so small and do not have any commercial component, who would really care about hacking this site? It turns out that hacking is indiscriminate.

I discovered a malware on the website putting links all over and using my server for sending spam emails. We were able to handle the attack without major incident but the experience has certainly been frustrating.

I’ve learned a thing or two. It turns out that small businesses are a growing target for hackers. Forty percent of all targeted cyber-attacks are aimed at companies with less than 500 employees, according to the security firm Symantec.   Also, with larger companies beefing up their protections, small websites are now the low hanging fruit.

Being hacked is a major productivity buster. While the breach was manageable, it was quite time consuming for me to coordinate between my hosting service, an internet security company and a WordPress expert.

It’s also been embarrassing. I found out we’d been hacked because readers gave us a heads up about malicious links and code they were seeing. What’s worse, my web hosting service even shut down my service due to the spamming emails until I could get the code deleted out of the site. I also wasn’t as prepared as I thought for getting back up and running. It took a fair bit of time to get the web site back up and running.

To all our readers, I offer my apologies for the inconveniences. I hope that you’ll stick around for more good things knowing that the site is now far more secure than ever in the past.

Just a quick shout out to some who helped:

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The Chisum Patent Academy’s next New York City seminar will be held on February 20 – 22, 2013.


American Elm conference room (Suite 503), Helmsley Park Lane Hotel, 36 Central Park South, New York, NY 10019.


The Chisum Patent Academy will hold its next Advanced Patent Law Seminars in New York City (February 2013) and Seattle (July/August 2013).

Each three-day seminar is limited to ten (10) attendees. Our seminars are conducted in interactive, round-table style to maximize opportunities for discussion and questioning. All sessions are co-taught by Donald Chisum and Janice Mueller.

Seminar Coverage:

The NYC 2013 seminar will focus in great depth on two timely and controversial patent law topics: patent claim interpretation and active inducement (particularly in the context of multi-actor method claims). We will also cover America Invents Act developments including the USPTO’s final rules on first inventor to file (taking effect three weeks after our seminar); preliminary injunctions and design patents; and inequitable conduct decisions post-Therasense.

Topics include:

  • Claims as the “Name of the Game”: Lessons on Patent Claim Drafting and Interpretation from Recent Federal Circuit Cases.
  • Active Inducement, Method and System Claims, and Joint Infringement.
  • America Invents Act’s “First Inventor to File” Principle on the Eve of Its Effective Date (March 16, 2013).
  • Preliminary Injunctions and Design Patents: Apple v. Samsung.
  • Inequitable Conduct: Decisions Since Therasense.

The Chisum Patent Academy will apply for 18 hours of CLE accreditation per seminar in those states where we conduct seminars. Where state bars require, we submit attendees’ names as they are listed on the sign-in sheet. If you are seeking CLE credit for a state other than where that seminar is being held, please apply directly to the appropriate state bar.

Registration Fee:

$2,750 per attendee.

Additional details about the New York City seminar (February 20-22, 2013).

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acilifescicollabAt American Conference Institute’s 17th Advanced Forum on Life Sciences Collaborative Agreements and Acquisitions, a seasoned faculty of business development, licensing, and alliance management executives from top life sciences companies like Pfizer, AstaZeneca, GlaxoSmithKline, Sanofi Pasteur, Novartis, and Bayer will help you enable your company to advance its key growth strategies.

In just two days, these experienced professionals will share:

  • In-depth analysis of recent trends in collaboration
  • Valuable strategies for managing fruitful alliances
  • Best practices for structuring deals to maximally benefit all parties
  • Tips for working with academic institutions
  • Methods for crafting effective termination provisions, and much more

You will also receive expert instruction on how to avoid antitrust problems directly from the Federal Trade Commission, mitigating the effects of patent reform on deal making, spreading and limiting risk, and exposing deal-killing IP problems before they wreak havoc.

In addition, exclusive post-conference workshops will cover:

  • Strategies for executing due diligence procedures, like managing legal risks associated with collaborations, comparing differing metrics used in M&A deals, and crafting checklists to perform effectively IP diligence.
  • The collaborative agreement review and strategy session where attendees can compare redacted collaboration contracts to develop best practices for drafting effective agreements.

Take this opportunity to get the most current and comprehensive information and advice regarding strategic partnering agreements in an environment that will provide valuable networking opportunities.

Register now for this timely event by calling 888.224.2480, by fax at877.927.1563, or register online at


*Patent Baristas readers are entitled to a discount when referencing the code: PB 200

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Now is your chance to join a select group of technological game-changers whose ingenuity will be showcased in a celebration of innovation.

Cutting-edge innovators can apply for a place among the exhibitors at the Department of Commerce’s United States Patent and Trademark Office (USPTO) Innovation Expo, to be held on the agency’s campus in Alexandria, Va., June 20-22, 2013.

Exhibits will showcase the latest technological developments from America’s innovators affiliated with large corporations, small businesses, academic institutions, government agencies and the independent inventor community. A diverse range of technologies will be represented at the Expo.

IE2012_websiteheaderThe Expo will also demonstrate the vital role America’s intellectual property system and the United States Patent and Trademark office play in promoting and protecting innovation, a role that contributes greatly to America’s competitiveness and economic prowess in the global economy.

The application deadline is February 13, 2013. Exhibition slots will be awarded to qualified U.S. patent owners on a rolling basis. Space is limited, so apply now.

Applications will be reviewed by an independent committee made up of representatives from some of the most important and respected intellectual property organizations.

For more information see the Innovation Expo FAQ or contact

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The Comprehensive Guide to Patent Reform

Who:                Patent practitioners needing a reminded how the world has changed
What:               The critical industry forum on The Leahy-Smith America Invents Act
When:              Wednesday, January 23 to Thursday, January 24, 2013
Where:             Doubletree Suites Times Square, New York, NY

March 15, 2013 is the last day for the decades-old U.S. patent regime, and for patent attorneys, this date is every bit as foreboding for them as it was for Caesar himself. The America Invents Act (AIA) is ushering in a raft of new rules and spawning regulations that upend generations of established prosecution and litigation practices, leaving no small amount of fear and consternation in its wake. But the Act also presents practitioners with opportunities to enhance their IP portfolios’ value and undermine rivals’ patents – thanks to a bevy of new pre-and post-issuance procedures.

Nevertheless, the full effects of countless nuances sprinkled throughout the AIA and the full implications of regulations promulgated under it remain unknown, and patent practitioners are left with a multitude of questions regarding the potential ramifications for their craft. With so much at stake, you must develop a plan to address both the changes already in effect and those whose coming implementation looms just one day past that fateful date – the Ides of March.

American Conference Institute’s 2nd Comprehensive Guide to Patent Reform once again unites experienced in-house counsel from top innovators, private practice experts, and senior officials from the USPTO to answer patent professionals’ most pressing questions, including:

  • What does “first to file” actually mean under the AIA requirements? Which system can you or should you file under – the current first to invent or the new first to file (or both)? And how do you avoid first-to-file bubble filings before 3/15/2013?
  • When can on-sale and public use activity be considered prior art? Has secret §102(f) prior art been eliminated?
  • Do you need to include best mode in the application or not and what happens if you don’t? Is best mode completely toothless now? How will examiners be able to address the best mode issue?
  • What will be required in the PGR process? What type of discovery? Expert witnesses? How do the estoppel provisions alter your analysis of whether to engage in the PGR system?
  • What estoppel provisions are associated with IPRs and how are these different from the inter partes reexamination provisions? When do you file a 3rd party parallel IPR?

Register by calling 888-224-2480 or faxing your registration form to 877-927-1563 or registering on-line

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Boon or Bane for Technological Innovation?: Software Patents

Pure software patents have become the focus of a heated innovation policy debate. On the one hand, new technological innovation is now a commonplace feature of our lives.  On the other hand, the high-tech industry seems awash in patent litigation, especially in the “smart phone war” between Apple, Samsung, Google, Microsoft, and other high-tech firms.

As a result, commentators now complain about the “problem of software patents.”

The IP Practice Group at the Federalist Society for Law and Public Policy Studies is now hosting a teleforum thatb will consider whether software patents advance development of new technological innovation or hinder innovation. The panelists represent all viewpoints on this topic and bring academic, legal and industry experiences to the issue.



Call begins at 2:00 p.m. Eastern Time on Tuesday, November 6, 2012.

Registration details:

Teleforum calls are open to all dues paying members of the Federalist Society. To become a member, sign up here. As a member, you should receive email announcements of upcoming Teleforum calls which contain the conference call phone number. If you are not receiving those email announcements, please contact them at 202-822-8138.

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Conference on the Life Cycle of Orphan Drug Development & Commercialization

Conducting Effective Orphan Drug Research and Clinical Trials to Expedite Orphan Drug Approval

When:    January 16-18, 2013
Where:   Boston, MA

Key Topics

Improve current rare disease research methods used in early stages of orphan drug development with Genzyme
Evaluate where the rare disease research units fit in the portfolio for large and niche pharma companies with Pfizer
Utilize translational medicine to be effective in orphan drug development with Vertex
Collaborate with patient advocacy groups to increase patient recruitment in clinical trials with BioMarin
Review the FDA Safety and Innovation Act and its impact on orphan drug reserach and development with National Organization for Rare Disorders

Key Features

2 Pre-Conference Workshops on January 16, 2013

  1. Pre-Conference Workshop A: Integrating Gene Therapy and Stem-Cell Therapy Treatments in Rare Disease Clinical Trials with ReGenX Biosciences, LLC
  2. Pre-Conference Workshop B: Exploring New Solutions to Reduce the Orphan Drug Funding Gap with Asklepion

Event Focus

The orphan drug and rare disease industry is one of the hottest topics in modern day medicine. With blockbuster drugs coming off patent, there is a great need for pharmaceutical companies to diversify their portfolios by exploring niche markets. The increasing presence of high-profile manufacturers in the orphan drug industry provides these companies with this opportunity.

The Life Cycle of Orphan Drug Development & Commercialization Conference will focus on the current landscape of rare disease and orphan drug development, different forms of structural based drug designs, and specifically designed clinical trials.  Through these clinical trials, and by having connected to the right patients to participate, will increase productivity and expedite orphan drug approval and commercialization of the final product.

By attending this conference, delegates will gain a comprehensive view of the orphan drug and rare disease industry and will have a clearer understanding of the natural histories of rare diseases and how to most effectively treat them. Through maximizing translational research methods to evaluate bio-markers and surrogate markers in the patient’s body, this will assist in the design of orphan drug clinical trials resulting in quickly obtaining results and being able to send the orphan drug in for FDA approval.

Attending This Conference Will Enable You To:

  1. Assess the current rare disease department within the pharmaceutical industry
  2. Analyze current orphan drug developments and treatment methods in clinical trials
  3. Select the optimal patient target market to engage in rare disease clinical trials
  4. Review orphan drug regulations and accelerate orphan drug approval
  5. Address the importance of reimbursement and commercialization in the orphan drug industry

Industry leaders attending this conference will benefit from a dynamic presentation format consisting of workshops, panel discussions, and industry-specific case studies that provide accurate, real-world knowledge. Attendees will experience highly interactive conference sessions, 10-15 minutes of Q&A time after each presentation, 4+ hours of networking, and exclusive online access to materials post-event.

Register here.

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