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Does the USPTO’s Policy Regarding Examination of RCEs Cause Unnecessary Delay?

On October 19, 2009, the U.S. Patent and Trademark Office released a “Notice of Change to Docketing of Requests for Continued Examination.” The Notice indicated that requests for continued examination (RCEs) filed on or after November 15, 2009 will be placed on the examiner’s “Special New” application docket instead of the examiner’s amended docket.

An examiner’s “Special New” docket also includes divisional and continuation applications, as well as applications accorded special status under 37 C.F.R. § 1.102.  Read the full notice here [1].

The stated purpose of this change is to allow examiners more flexibility in managing their workload, insofar as examiners will no longer be required to act on an RCE within two months of entry, as is required for applications on the examiner’s amended docket. This change in docketing procedure can significantly slow the prosecution of RCEs.

The Pabst Patent Group [2] in Atlanta, GA, thinks the policy is being used to cut the perceived number of pending cases drastically. That is, when an applicant files an RCE, the USPTO is calling them all new applications. The Pabst Patent Group is trying to get the USPTO to move cases back to the amended docket.

The have written a letter to David Kappos, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, urging him to rescind or revise the change to the docketing of RCE’s:

Prior to this change, the examiner was required to act in an expeditious manner on the case. Now, the case is treated as if it were a newly filed application, and cases that may have had extensive, time consuming, and expensive prosecution by the applicant and examination by the patent examiner, may not be acted on for one to three years. Attached is a list of some of the applications we are prosecuting which have already experienced significant delays due to the policy change. Examiners and their supervisors say they have no deadlines to act on these cases and therefore put them into the same docket as cases in which examination has not yet begun. This is detrimental to efficient prosecution and the effective resolution of issues.

RCEs may be filed for many reasons. In some cases, data from clinical or animal studies may not have been available earlier. In some cases, RCEs are filed due to poor examination in the first office action on the merits. It is not uncommon to have applications in which weak art is cited in the first office action on the merits.

See the entire letter here:  Letter to USPTO Director or Commissioner re Change to Docketing of RCEs [3]