Increased Delays Expected When Filing RCEs

At present, when a patent applicant files a Request for Continued Examination (“RCE”) during U.S. patent prosecution, the applicant can expect further action from the examiner within about the same amount of time it takes to receive a follow-up action to a regular, non-final office action, typically a few months. The United States Patent and Trademark Office (“USPTO”) recently announced that it would implement internal changes to RCE docketing on Nov. 15, 2009, and will implement internal changes to the examiner count system by early 2010. These changes may significantly delay further examination of an application in which a RCE is filed, and consequently the ultimate issuance of a patent. To mitigate the effects of these changes, patent applicants may need to alter patent prosecution strategies going forward.

Change in RCE Docketing

The USPTO currently places RCEs on the examiner's “amended” docket. The amended docket includes all applications for which the applicant has filed a response to a non-final office action. Examiners are required to act on applications on their amended dockets within two months of entry on their dockets.

In contrast, the “special new” application docket currently includes continuation applications, divisional applications, and applications that have been made special under 37 C.F.R. ' 1.102. Examiners are required to act on special new applications before working on applications on their “regular new” dockets, which include all new applications other than those on the special new dockets awaiting first actions. In contrast to applications on amended dockets, examiners are not required to act on applications on their special new dockets within a prescribed amount of time after docketing.

The USPTO's announcement states that RCEs will now be placed on the examiners' special new application dockets, rather than the amended dockets. Importantly, the USPTO's change in RCE docketing means that an examiner will no longer be required to act on a RCE within two months of its entry on his or her docket. Given this change, applicants may now have to wait many months for further action after filing a RCE.

Change in RCE Counts

The RCE docketing change comes on the heels of another change to USPTO internal procedures ' a change to the examiner count system. This system uses points to reward examiners who manage their workflow in accordance with specific USPTO guidelines. Examiners are awarded counts for performing certain actions. For example, the USPTO awards examiners specified counts for each non-final office action, final office action, RCE and allowance. The USPTO's recent changes to the count system create a disparity between the counts examiners receive for acting on RCEs and those received for original applications. For instance, the counts received by examiners for first actions on original applications will increase from 1.00 to 1.25, while the counts received for acting on first RCEs will remain at 1.00. In addition, the counts received for acting on second or subsequent RCEs will decrease from 1.00 to 0.75. These changes may provide somewhat of a disincentive for examiners to act on RCEs.

The Combined Effect of RCE Docketing and Count Changes

Together, these docketing and count changes have the potential to significantly delay further examination of an application after a RCE is filed. With the average pendency between filing of a RCE and mailing of a new office action currently at approximately three months, and the average pendency between filing of a continuation application and mailing of a first office action currently at approximately 20 months, it is difficult to predict exactly how long the increased delay will be. However, even if the difference is split down the middle, applicants would be wise to revisit prosecution strategies and determine what, if any, alterations are warranted to best navigate the effect of the RCE changes.

At the Time of Filing

When filing a patent application, an applicant can take certain steps to avoid potential delays stemming from the RCE changes. For example, an applicant can stay on top of formalities such as filing formal drawings with the application and promptly filing information disclosure statements (“IDSs”). While applicants typically strive to file IDSs prior to the first office action, it is not uncommon for applicants to file a RCE to have an IDS considered, even when the applicant has been aware of the cited prior art for some time. Under the RCE changes, however, this practice may now result in considerable delays in examination.

As with IDS filing practices, applicants often use the first non-final response to amend the claims to align them with evolving commercial strategies. To further reduce reliance on RCEs, practitioners can endeavor to make sure that, before the examiner begins examination of the application, the claims are of appropriate scope to capture the commercial value of the invention. To this end, practitioners may pursue discussions with applicants both before and after filing to understand the competitive landscape, and then may recommend filing preliminary amendments when necessary to capture the desired subject matter in the claims before examination begins. Via the USPTO's private PAIR (Patent Application Information Retrieval) system, applicants can receive an estimate of when the first action is expected. Using this tool, practitioners may be able to schedule and conduct a pre-examination checkup with applicants to discuss the scope of the claims.

After the First Action

Once an applicant has received a first office action, he or she should identify steps to be taken to move prosecution forward in a manner that is likely to reduce the need to file a RCE or multiple RCEs. Rather than aggressively prosecuting broad claims without meaningful amendments, an applicant may want to take a more conservative view of the prior art and narrow the claims so as to advance prosecution sooner rather than later. An applicant may also wish to conduct an interview with the examiner as soon as possible in an effort to keep examination on track and ensure that the examiner and the applicant are on the same page. If an applicant prefers not to amend the independent claims, the applicant could expressly argue one or more selected dependent claims in addition to the independent claims. This type of approach may increase the cost of preparing first responses, but may pay dividends in terms of quicker issuance of a patent and avoidance of RCE fees, should a RCE or multiple RCEs be avoided.

After a Final Action

As is customary, even under the current RCE docketing procedures, an applicant should consider filing a response to a final office action before the two-month deadline. Doing so gives the examiner an incentive to provide the applicant with a timely advisory action, which in turn should allow more time for a possible second final action and an examiner's amendment, as well as time for the applicant to consider appeal and RCE options.

Patent Term Adjustment

While very likely to impact patent application pendency, the RCE changes may also impact patent term adjustment (“PTA”). The patent laws provide for PTA, an extension of patent term, to compensate applicants for delays at the USPTO. Applicants can gain one day of patent term for each day of certain USPTO delays enumerated in 35 U.S.C. ' 154(b)(1)(A), including an examiner's failure to respond to a RCE within four months of its filing. Similarly, applicants can gain one day of patent term for each day past the three-year mark in prosecution under ' 154(b)(1)(B). The addition of patent term under ' 154(b)(1)(B), however, is offset by delays caused by the applicant, including the filing of RCEs.

Assuming that the USPTO's new RCE docketing procedures will result in examiners responding later than four months from an applicant's filing of a RCE, such a delay will invoke ' 154(b)(1)(A)(ii) and lead to more available PTA for applicants. However, since a RCE filing stops the accrual of PTA under ' 154(b)(1)(B), any additional USPTO delay resulting from RCE delays would only add to PTA under ' 154(b)(1)(A). Nevertheless, it seems that the RCE changes may provide a way for applicants to maximize their patent terms.

The additional PTA resulting from RCE-related delay may be further enlarged if the Federal Circuit affirms the decision in Wyeth v. Dudas , 580 F. Supp. 2d 138 (D.D.C. 2008). In this case, the district court determined that the USPTO's current method of calculating PTA, which uses the longer of the delays under ' 154(b)(1)(A) and ' 154(b)(1)(B), is incorrect. The court held that PTA is properly calculated by adding together PTA under ” 154(b)(1)(A) and 154(b)(1)(B) and subtracting any overlap between the two. An affirmance of this decision may be advantageous for applicants seeking patents whose greatest commercial value comes at the end of the term, but would be of little or no consequence to applicants who would rather have an earlier issue date than an extension of term.

Delays May Be Beneficial

While some may not like the idea of delays in the abstract, the additional prosecution delays expected to result from the USPTO's RCE changes may not result in a negative outcome in all situations, as noted above with respect to the potential for additional patent term. An applicant may also desire a longer pendency when developing strategies for filing continuation applications. If such strategies are not yet complete, an applicant may appreciate extra time to finalize its plan for prosecuting and enforcing a family of patents.

Conclusion

While it is yet to be determined exactly how much the USPTO's changes to RCE docketing and the examiner count system will delay patent prosecution, we know that examiners will no longer be required to quickly turn around RCEs as they have in the past. While the filing of a RCE may not result in quite the same level of delay as the filing of a continuation application, the RCE changes are likely to have a significant impact on RCE practice and should be considered when developing prosecution and enforcement strategies. And for applicants seeking longer pendency or an additional patent term, the likely increased delay resulting from these changes may have a silver lining.