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American Intellectual Property Law Association

Modifications to the USPTO Count SystemSponsored by the Chartered Institute of Patent Attorneys

Ron Harris, The Harris Firm

AIPLA IP Practice in Europe CommitteeLondon, England

March 10, 2014

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Increase in RCEs 2009-2013

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Two Reasons for RCE Backlog

• 2009-2011 slight increase in RCEs filed• 2011-2013 examiner preference against RCEs

– ironically caused by USPTO attempt to provide compact prosecution to eliminate/reduce RCEs

• incenting examiners to provide clear, quality examination• instead of stringing along applicants with poor rejections not

based on best art, to enhance their production numbers– appeal too expensive and time consuming

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USPTO Counts: The Basics

• Examiners must obtain counts to stay employed– 40 hours/week clock is almost* always ticking– more complex art requires fewer counts per bi-week

• An examiner gets 2.0 counts for:– first non-final Office action (1.25), and– notice of allowance (.75) or– abandonment (.75)

• An examiner gets zero counts for – subsequent non-final actions – final Office actions– advisory Office actions * restrictions, interviews

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2011-2013 RCE Inflation

• RCEs worth fewer counts– less credit for RCEs

• 1st RCE: 1.75 (1.0 + .75) instead of 2.0• 2nd-Nth RCE: 1.5 (.75 + .75) instead of 2.0 • no longer on expedited amendment docket

– goal was to reduce entire backlog• examine oldest effective date • favors first action continuing applications because they get 2.0

full counts– unless an RCE is probably allowable and the applicant calls

to request examination (case-by-case).

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Growth of RCE Backlog

• Examiners favored continuations over RCEs– CON/CIP Office actions ~2-6 months– RCE Office actions more than a year (backlog)

• Applicants filed continuations for time-sensitive cases and to simply to obtain a timely patent– unless wanting to lengthen pendency

• to preserve already-accrued patent term adjustment• to claim competitor’s product

• RCE backlog grew substantially

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(1) 3/2013-9/2013 De-inflation

• RCEs were again worth the same as new cases and continuations / divisionals

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(2) 9/2013-2014 ad hoc RCE Deflation

• Examiner-by-examiner ad hoc re-weighting– RCEs worth fewer counts only for examiners with less

than 5 RCEs on new, special “RCE” docket• RCEs no longer on same docket/tab as NEW and CON cases

– if examiner has 5 or more RCEs on his/her docket, RCEs worth the same as other cases

• Less easy gamesmanship by applicants– individual examiner docket relatively hidden– less incentive to prefer filing continuation

• 1st RCE cost = $1200• 2nd RCE cost = $1700 • continuation cost = $1600

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(3) Quick Path IDS (a/k/a “Q-pids”) Pilot

• IDS not reviewed after allowance or final action unless there is a 3-month statement and IDS fee– if no 3-mth statement, can file IDS/fee b4/w issue fee*

• No need to file RCE if IDS does not raise an issue to reopen• Reopen prosecution if IDS does raise an issue

• IDS not reviewed after issue fee paid unless RCE and 1.312 petition filed– if 3-mth statement, can file e-petition to withdrawal and

cond’l RCE after issue fee (IDS, RCE and petition fees)^• Get RCE fee back if IDS does not raise an issue to reopen• Get IDS fee back if IDS does raise an issue to reopen* 3 hours off the clock time for utility, reissue & plant / 1 hour for design

^ 3 hours off the click time for utility and reissue only

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(4) After Final Consideration Pilot

• Applicant must narrow at least one independent claim after final Office action and file simple form

• Examiner given time off the clock to review – 3 hours for utility / 1 hour for design patent – avoids examiner summarily

• “not entering” and • issuing an advisory action

– reduces requirement to file an RCE• If not allowable, advisory action still issued• at least examiner looks at the amendment

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Tips for Applicants

• File continuations per your examiner’s RCE docket – Ask examiners about trends & attitudes in their art unit

• examiners generally love to talk to people (for a change)• file according to your objectives

• Avoid RCEs by requesting – After Final Consideration– QPIDS for after final IDS filings

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Thanks for your attention. Questions?

Ron C. Harris, Jr.The Harris Firm

922 N Street, NW, Suite 101Washington, DC • 20001

T: +1 202 470 0126F: +1 202 478 2725

3-3-3 Higashiazabu, 3FMinato-ku, Tokyo 106–0044

T: +81 3 4455 7215F: +81 3 6800 6868www.harrisfirm.net