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American Intellectual Property Law Association

RCE Practice: Pilot Programs and Delays in Examination

Chris Fildes

Fildes & Outland, P.C.IP Practice in Japan Committee Pre-Meeting

AIPLA Annual Meeting

October 22, 2013

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Pilot Programs and RCE

• Quick Path Information Disclosure Statement (QPIDS)– Filing IDS after payment of the issue fee w/o RCE

• After Final Consideration Pilot (AFCP) 2.0– Consideration and possible entry of narrowing

amendment after final w/o RCE

• RCE Outreach effort– USPTO seeking feedback from the public to help reduce

the backlog of applications in which an RCE has been filed

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QPIDS

• Overview– Eliminates the requirement for submitting an RCE with

an IDS filed after payment of the issue fee in order for the IDS to be considered

– May only be filed after payment of the issue fee but before issuance of the patent

– A QPIDS submission includes:• A QPIDS transmittal form (such as PTO/SB/09)• A Web-based ePetition to withdrawn the application from issue• The petition fee set forth in 37 CFR 1.17(e)• An RCE and conditional RCE fee• An IDS with a timeliness statement and conditional IDS fee• Authorization to charge all fees to a USPTO deposit account

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QPIDS

• Overview– If the examiner determines that the submission does not

necessitate reopening prosecution, the RCE will not be processed and the RCE fee will be returned. The Office will in this case keep the IDS fee. A supplemental notice of allowability will be issued, and no further action by applicant is necessary.

– If the examiner determines that the submission does necessitate reopening prosecution, the Office will process the RCE, keep the RCE fee, and return the IDS fee

– Extended until December 14, 2013

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AFCP 2.0

• Overview– Authorizes additional time for examiners to search

and/or consider responses after final rejection, prior to filing an RCE

– An AFCP 2.0 submission includes:• A specific request for consideration under the AFCP (such as

PTO/SB/434)• An amendment to at least one independent claim that does not

broaden the scope of the independent claim in any aspect.

– After initial review of the amendment, if the examiner determines that additional search and/or consideration cannot be completed within the allotted time, the examiner will issue an advisory action

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AFCP 2.0• Overview

– If the examiner finds that the amendment puts the application in condition for allowance, then the examiner will issue a notice of allowance, avoiding the filing of an RCE by the applicant

– If the amendment does not place the application in condition for allowance, the examiner is directed to schedule an interview to discuss the amendment

– Extended until December 14, 2013

• Has the AFCP increased the allowance of amendments filed after final without an RCE?– The USPTO has not released any statistical evidence

showing that the AFCP has been a success

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RCE Outreach

• Overview– USPTO requested comments and answers to 11

questions related to RCE practice (See 77 Fed. Reg. 78230).

– Roundtable meetings in early 2013 to discuss RCE practice and ways to reduce RCE filings• Focus session directed to the 11 questions• Root causes for RCE filings• Role of RCE practice in patent prosecution• Prosecution strategies to reduce the need for RCE filings• Recommendations for changes in practice related to RCE

– No further action by the USPTO to date

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RCE Statistics

• Increase in the RCE backlog since 2009

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RCE Statistics

• Relationship between # of claims and filing of RCE

1-10 11-20 21-30 31-40 41-50 50+

% at least one RCE

0.247276793726616

0.266052964530343

0.329281143180242

0.394106090373282

0.406529752501316

0.438570141183539

3%

8%

13%

18%

23%

28%

33%

38%

43%

Number of Allowed Claims per Application

% A

llow

ed

Ap

plic

ati

on

s H

av

ing

On

e o

r M

ore

RC

E

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RCE Statistics

• Application status just prior to filing RCE

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RCE Statistics

• Next action following Rule 116 amendment

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RCE and the USPTO

• New RCE fee structure– First RCE - $1200 (large entity)– Second and subsequent RCE - $1700 (large entity)

• More than filing a new (continuation) application

• Docketing of RCEs– Previously placed on “Amended” docket

• Had to be considered within two months

– Effective Nov. 15, 2009, placed on “Special New” docket• One application per month• Increases delay in examination, thus increases pendency• Effective date coincides with the increase in RCE backlog

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Thanks for your attention!

Chris FildesFildes & Outland, P.C.

+1-313-885-1500fildespat@teleweb.net

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