after final practice linda m. saltiel june 2, 2015

After Final Practice

Linda M. SaltielJune 2 , 2015

©2015 Sutherland Asbill & Brennan LLP

PRIVILEGED & CONFIDENTIAL


• RCEs • AFCP 2.0• Pre-Appeal Brief Review



RCE Practice

• Audit to assess increase in RCE pendency and backlog published June 30, 2014

Structural and examiner-specific issues that increase the number of RCEs

New information cited by examiners after the first Office Action

USPTO initiatives that could reduce RCEs



RCE Practice

Average Waiting Time for Preliminary Determination

Year New Applications (Months) RCE (Months) 2009 25.8 2.0

2010 25.7 2.4

2011 28.0 4.0

2012 21.9 5.9

2013 18.2 7.8

• As USPTO put incentives in place in 2010 to encourage review of new applications, RCE backlog increased



RCE Practice

• RCE Backlog To decrease backlog, USPTO doubled the number of

Examiners between 2006 and 2012 This reduced patent backlog and doubled number of first

Office Actions on new patent applications, but the number of RCEs tripled Applications reviewed by lower-grade examiners are

more likely to result in RCEs than applications reviewed by higher-grade examiners

New examiners are following standard procedures



RCE Practice

• Rates of RCE filing vary by art unit 20 out of 600 art units have RCE rates exceeding 70% Over 50 art units have RCE rates under 40% RCE pendency varies from 100 to over 300 days

• There are meaningful differences across art units



RCE Practice

• Inclusion of new information is a concern for Applicants

Examiners cite new prior art during final rejection Applicant files RCE to have response to new prior art

considered

• The decision to cite new art by the Examiner is rarely incorrect

Examiners include references to new prior art because applicants substantively amended their claims or changed the scope of the claims



RCE Practice

• RCE Backlog RCE backlog grew from 14,000 in January 2010 to 112,000

in 2012 The average wait time to receive an Office Action after an

RCE increased from 48 days in January 2008 to 210 days in January 2013

New incentives in April 2013 reduced RCE backlog

• Examiner behavior is affected by production credit and docket management policies



RCE Practice

• RCE rate is higher among lower-grade examiners but the decision to cite new art in a final rejection by the

examiner is rarely incorrect Need to enhanced preliminary review

• Examiner behavior is affected by production credit and docket management policies

• Retention of examiners

• How can Applicant help?



First Action Interview Pilot

• Examiner conducts a search and issues either: (1) a Notice of Allowance; or (2) a Pre-Interview Communication including a summary of potential rejections

• The Examiner will not examine the application out of turn. Thus, this program will not expedite when the application is initially examined

• Applicant will have 30 days (with a one-month extension of time being permitted) to respond to pre-interview communication

• An interview must be conducted within 60 days from filing the request or 90 days from issuance of the Pre-Interview Communication

• Failure to timely respond to pre-interview communication or responding by requesting not to interview will be treated as a request to withdraw from the pilot



First Action Interview Pilot

• USPTO data indicates quicker and higher allowance rate than applications not in this program

• Lower likelihood that an RCE will be filed

• Applicants should focus on improving quality of preliminary examination and the first response



After Final Consideration Pilot

• Applicant files an amendment that amends at least one independent claim and does not broaden the independent claims

• If additional search and/or consideration is required but cannot be completed within the allotted time, the examiner will process an advisory action

• If any additional search and/or consideration could be completed within the allotted time, then the examiner will consider the amendment. If the examiner determines that the amendment does not place the application in condition for allowance, then the examiner will contact the applicant and request an interview



After Final Consideration Pilot

• AFCP 2.0 reduces the likelihood that an application will result in an RCE by almost 20%

• Some supervisors believe that applicants do not sufficiently narrow claims and examiners do not have enough time to review after-final amendments




• What will help reduce backlog and pendency? Balance incentives Improve preliminary examination of applications

Improve retention rate of examiners Applicant participation in First Action Interview Pilot

(FAIP) After Final Consideration Pilot (AFCP 2.0)



Pre-Appeal Brief Conference Request

• A request for a panel of three examiners to review the application (the examiner of record, the examiner’s supervisor and a third examiner)

• The request must be filed with a notice of appeal and a pre-appeal brief, limited to 5 pages

• The request should specify: clear errors in the examiner’s rejections; or the examiner’s omissions of one or more essential elements needed for a prima facie rejection

• The panel will reaches one of three conclusions: 1) allow the appeal to proceed to the Board; 2) allow the application; or 3) reopen prosecution



Questions and Discussion

after final practice linda m. saltiel june 2, 2015

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