IP Law Bulletin

Imagine a patent office reform that improves the quality of the examination process and shortens an application’s pendency period. The current reform efforts in the United States Patent and Trademark Office (USPTO) promises just that. On October 19, 2009, USPTO Director David Kappos announced an overhaul of the USPTO’s examiner performance metric system. The new count system gives examiners more time overall, including more time for initial examination and examiner-initiated interviews, while reducing the credits for requests for continued examinations (RCEs). In the long run, the new count system is intended to incentivize examiners to provide applicants with “compact prosecution" of their applications. For the near-term, however, applicants and their attorneys may need to be vigilant in monitoring the examination of their post-RCE applications.

Under the previous count system, examiners received one count for a first action (either initial or after RCE), and one count for a “disposal” either through allowance, abandonment, or appeal. An RCE also counted as a disposal and started a new round of examination. Each round of examination from first action to disposal received two counts total. Under time pressure to reach disposal, the system provided some incentive for the examiner to force a new round of examination after issuing a final Office action. This also led to aggressive restriction requirements that forced the applicant to divide a single application into multiple applications knowing that the resulting divisional applications would most likely be examined by the same examiner.

The new count system awards more counts for first round first office actions (1.25 count) than later round first office actions (1 count after first RCE and 0.75 thereafter). Along with more incentive to front-load examination, the examiners are granted more examination time for each round and additional “non-examining” time for examiner-initiated interviews. Previously, examiners only received additional time for applicant-initiated interviews.

The new system also treats RCEs as any other continuation or divisional application, by placing RCEs on the examiner’s Special New docket. Effectively, examiners are no longer required to take action on an RCE within 2 months. Examiners will now be required to work on the oldest new application every four weeks, or only one case each month from their Special New docket. For current applications in post-RCE examination, this could translate into significant delays. Over time, although additional time and incentives for “compact prosecution” should reduce the number of RCEs, it is apparent that the new system may require the applicant and their attorney to more aggressively pursue an earlier allowance.

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