IP in Depth: Fixing the Application Backlog
Favoring the examination of either new applications or RCEs over the other does not seem like a practical or equitable solution to the backlogs.
In my March 2014 column (“Understanding the USPTO's Compact Prosecution Process"), I discussed how U.S. patent applicants resorted to filing requests for continued examination (RCE) applications as the U.S. Patent and Trademark Office (USPTO) stayed the course on compact prosecution. Facing an ever-increasing backlog of unexamined (“new”) patent applications that numbered more than 700,000 in 2009, the USPTO began a program to delay further examination of RCE applications. This program disincentivized patent examiners from examining RCEs by decreasing production credit from 2.0 “counts” to 1.75 (and 1.5 counts for each subsequent RCE in the same application), and eliminated the previous docketing system for RCEs that typically required RCEs to be examined in two or three months. Under the 2009 program, an examiner might examine a little more than one RCE per month, with some commentators noting it could take years for some RCEs to be examined.
The backlog of unexamined applications dropped about 15% from over 700,000 in 2009 to 592,000 in March 2013. Over the same time period, the backlog of RCEs soared nearly 650% from 15,000 to 112,000. Management of the backlog of unexamined applications is dependent on the number of new applications that are filed and the number of examiners that are available to examine the applications. Each of these variables can be predicted with relative certainty. Management of the backlog of RCE applications likewise is dependent on the number of RCE applications that are filed and the number of examiners that are available to examine the applications.
The drastic increase in the backlog of RCEs, together with the marginal gains in reducing the backlog of unexamined applications that were observed after 2009, indicated that shifting manpower focus alone would not effectively resolve both backlogs. The USPTO concluded that the efforts should be focused on reducing the number of RCEs that applicants file. In March 2012, the USPTO instituted the After Final Consideration Program (AFCP), in which examiners were given extra time to review and consider After Final responses and to conduct interviews with applicants. Under the AFCP, applicants are required to submit a limiting amendment for at least one independent claim.
In May 2012, the USPTO also instituted the Quick Path Information Disclosure Statement (QPIDS) pilot program. In this program, an Information Disclosure Statement (IDS) can be submitted with provisional authorization to file an RCE, rather than filing an RCE after an Issue Fee has been paid in order to have an IDS considered. In such a case, if the examiner concludes that the application remains allowable over the IDS, the RCE will not be filed. The AFCP and QPIDS were intended to reduce the number of RCEs that were filed. Nevertheless, the number of unexamined RCEs continued to grow.
The Backlog Persists
In March 2013, the USPTO instituted the first step in a two-phase leveling plan to address the RCE inventory/backlog. In phase one, examiners were “temporarily” given 1.25 counts for a first action following an RCE and an additional .75 counts at the disposal, the total of which is on par with RCE credits before 2009. In October 2013, under phase two of the leveling plan, examiners with inventories of more than 60 unexamined RCEs during the first half (and more than 50 unexamined RCEs during the second half) of 2014 were only to review RCEs and receive two credits for each RCE or subsequent RCE(s) in a given application.
On June 30, 2014, the U.S. Department of Commerce Office of Inspector General submitted a report to the deputy director of the USPTO entitled “Rapid Rise in the Request for Continued Examination Backlog Reveals Challenges in Timely Issuance of Patents.”1 Among other conclusions, the report found that applicants are more willing to pursue RCEs after a final rejection than in the past and that applications examined by lower-level examiners were more likely to result in RCEs. The report further indicated that the patent examining policy that allows examiners to apply new prior art to amended claims in final rejections causes applicants to file RCEs in order to respond to the new prior art.
The report also noted that USPTO incentives such as the AFCP, QPIDS and First Action Interview Pilot Program (FAIP) that could reduce the RCE backlog have low applicant participation rates. The report noted that the two-phase leveling plan will have an unknown effect on unexamined applications and alluded to the need for similar short-term plans in the future to balance examiners’ incentives to examine new applicants
Seeking New Solutions
In May 2010, Secretary of Commerce Gary Locke published an article commenting on the backlog of 750,000 unexamined applications, in which he wrote, “Today, America’s patent system—and by extension our entire innovation system—isn’t working.”2 The previously mentioned Inspector General’s 2014 report includes a similar comment directed to the RCE backlog: “Since fiscal year (FY) 2010….there was a concurrent decline in the USPTO’s performance in issuing timely determinations on another type of filing in an application, the Request for Continued Examination (RCE).”
Considering that 25% of all issued patents are based on the filing of at least one RCE, it seems like treating RCEs differently from new applications is a disservice to applicants whose RCEs eventually issue. Favoring the examination of either new applications or RCEs over the other does not seem like a practical or equitable solution to the backlogs.
Any views or opinions expressed in this column are those of the author and do not represent those of Ceramic Industry, its staff, Editorial Advisory Board or BNP Media.