Understanding the Backlog Problems Associated with Requests for Continued Examination Practice

By: Sean Tu

One of the greatest problems facing the current patent administration is a long patent pendency period. This study focuses on Request for Continued Examination (RCE) practice, and its effects on the current patent application backlog problem. RCEs are used to continue prosecution after a patent examiner has issued a final rejection. However, now that RCEs are placed on an examiner’s special docket, some examiners may pick up prosecution one to two years after the last action. Accordingly, there are great inefficiencies that may be created by this delay, such as relearning issues and questions from the previous action, diminished value of examiner interviews, and a higher likelihood of transfer to a new examiner. This study suggests that the RCE problem may be much worse for some art units compared to others. Specifically, the RCE problem is unevenly distributed between certain art units with technology center 1600 (biotechnology and organic chemistry) suffering the most from unexamined RCEs, while technology center 2800 (semiconductors, electrical and optical systems and components) remain unaffected. This RCE backlog can result in a delay of approximately three years for some art units. Possible solutions to the RCE problem include creating a two-track examiner specialization program: one track focusing on drafting office actions and a second track focusing on finding relevant prior art. Another possible solution would be to create a new type of request to reopen prosecution after final to allow applicants to enter new narrowing amendments or add new declarations without adding new arguments. A final solution may be to place the RCE back in the examiner’s normal docket and not in the examiner’s special new docket.

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Cite: 13 Duke L. & Tech. Rev. 216