IP Law Bulletin

The new program for RCEs was implemented on December 19, 2011, as a corollary to Track I prioritized examination for newly filed utility applications. Applications that are placed into this program will be placed on the examiner’s special docket throughout its entire prosecution until a final disposition is reached. A final disposition includes mailing a Notice of Allowance, mailing a final Office Action, filing a Notice of Appeal, the Board of Patent Appeals and Interferences completing examination, filing a subsequent RCE, or abandoning the application. Applications placed on an examiner’s special docket are required to be reviewed by the examiner sooner than if the application is placed on the examiner’s regular docket. However, examiners have some discretion over when an application can be reviewed, and thus examiners are not required to review all applications on the special docket before reviewing applications on the regular docket.

In accordance with 37 C.F.R. § 1.102(e)(2), applicants can file for prioritized examination if the following conditions are met:

• Application is a utility or plant nonprovisional (direct or national stage following PCT application);
• Request is filed electronically (except for plant applications);
• There are ? 4 independent claims, ? 30 total claims, and 0 multiple dependent claims (if claims are added during prosecution that cause these thresholds to be exceeded, the application is removed from the examiner’s special docket); and
• $4800 fee ($2400 for small entities) is paid (plus $130 processing fee and $300 publication fee, which are also required for all applications, regardless of whether it is prioritized).

Additionally, the USPTO limits the total number of prioritized examination requests to 10,000 per fiscal year, including both initial applications and RCEs.

This new program for RCEs certainly affords applicants benefits. While in the past two years the USPTO has steadily reduced the number of unexamined non-provisional patent applications by about 80,000, during that same period of time the average time it takes an examiner to respond to a RCE has more than doubled, jumping from 1.8 months in February 2010 to 5 months in January 2012. This is the result of administrative changes at the USPTO that no longer require examiners to respond to RCEs within two months of the RCE appearing on the examiner’s docket. RCEs are now treated like continuation or divisional applications, which allows examiners greater flexibility in deciding which applications to examine. However, if a request for prioritized examination is filed with a RCE, applicants can circumvent a possible delay by moving the application onto the examiner’s special docket, essentially obligating the examiner to examine the application more quickly than he or she would otherwise be permitted.

Before filing a request for prioritized examination in conjunction with a RCE, applicants may find it more useful to first try other approaches. Patent prosecution should be a collaborative effort between applicants and examiners, and thus applicants are typically best served by establishing a rapport with the examiner. This allows applicants and examiners to work together to determine the patentable invention while achieving their personal goals. One of the applicants’ primary goals, of course, is achieving allowance. One of the examiner’s primary goals, on the other hand, is meeting or exceeding a count target, which is a number established by the USPTO. Examiners earn varying amounts of points toward their count targets based on the actions they take during prosecution, including issuing Office Actions and Notices of Allowance. This count system incentivizes examiners to progress prosecution forward and more quickly determine the patentable invention. Thus, as applicants consider how to best achieve their goals, they should also consider the examiner’s goals so they can work together to create a mutually beneficial relationship.

Prior to filing a RCE, applicants should consider interviewing the examiner to discuss amendments and arguments they intend to make in conjunction with filing the RCE. This allows applicants an opportunity to reach agreement with the examiner that the amendments overcome the rejections of record so that any subsequent Office Action advances prosecution of the application. Further, during an interview, applicants can discuss with the examiner how this application will be handled after the filing of the RCE, i.e., how quickly does the examiner intend to pick-up this application once he or she is aware the RCE has been filed. The administrative changes at the USPTO afford examiners greater flexibility in deciding which applications to examine, which means an examiner can decide to pick up a recently filed RCE before other, earlier filed actions. It is this flexibility that allows examiners to quickly pick up a RCE filed with only an Information Disclosure Statement to have additional references considered after applicants already received a Notice of Allowance. In these instances, the examiner anticipates that review of the additional references will be quick and that he or she will be able to re-allow the case to earn a quick boost toward his or her count target. It is the incentive of this quick boost that can drive the examiner’s decision to pick-up a particular application.

Applicants would be well served to put themselves in the examiner’s shoes and give consideration to the examiner’s incentives when asking the examiner how quickly he or she intends to pick up the application. If recent amendments place the application in condition for allowance, applicants should indicate as such to the examiner during the interview. The possibility of a quick allowance will probably be enticing to the examiner. Most likely the examiner will indicate that an updated search is required in view of the amendments. Applicants, however, can keep the incentive of a quick allowance in play by indicating to the examiner that applicants are willing to negotiate further amendments to overcome additional references the examiner may find in an updated search during a follow-up telephone conversation once the search has been updated. The examiner can then make any further amendments by way of an examiner’s amendment issued in conjunction with a Notice of Allowance, thereby achieving the goals of both parties.

There are additional examiner incentives that may make the examiner more inclined to examine applicants’ application before others. For example, if the invention is extremely complicated but during an examiner interview applicants provided a good tutorial about the invention, applicants should consider tactfully indicating to the examiner that there may be a benefit to reviewing the application soon after the RCE is filed while the tutorial is still fresh in mind. Alternatively, perhaps the invention is quite interesting, fun, or cool. Applicants should highlight the interesting, fun, or cool features of the invention during the interview, which can serve as an implicit reminder to the examiner that working on this application is more interesting, fun, or cool than many of the other applications he or she can choose to work on from the examiner’s docket. Still further, the action of establishing a good rapport and collaborative relationship with the examiner in and of itself may be enough of an incentive for the examiner to review one application before another. Human nature can lead an examiner to choose to work with an applicant collaboratively to determine patentable subject matter rather than interact with an applicant only on paper, or alternatively, having to interact over the telephone with an antagonistic applicant. In fact, there are a whole host of reasons why an examiner may be more interested in examining one application before another, and applicants should use the added flexibility afforded to the examiner to their benefit to make the examiner more inclined to review their application as opposed to somebody else’s.

The collaborative, personal approach to patent examination is an option that should generally be considered before requesting prioritized examination because of the benefits it affords both applicants and the examiner. The USPTO has provided the examiner with a greater flexibility to review RCEs, and filing for prioritized examination takes away some of the examiner’s flexibility in that regard. The collaborative approaches suggested here can help applicants achieve the same benefits of prioritized examination (i.e., quicker examination) without the expense, and with the added benefit of creating a more enjoyable environment in which applicants and the examiner can work together to discern patentable subject matter and achieve their respective goals. While there are instances in which filing a prioritized examination request in conjunction with a RCE may be beneficial or necessary, applicants should typically consider these alternative approaches before undertaking such a filing.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.