23rd March 2012 (0 Comments)

The Backlog and RCE Practice:


It is quite well known that the USPTO has a very substantial backlog of cases, which would cause a case filed today to get a first action on the merits in perhaps three years.  And the backlog is growing, not shrinking.  It also well-known that Director David Kappos and other officials at the USPTO maintain stoutly that the backlog is of serious concern and they are doing all they can to reduce it.

For many practitioners, of which I am one, the actions of the Office do not at all seem to align with this stated goal of reducing the backlog.  The recent rule change to treat Requests for Continued Examination substantially as new cases is one example.  This change delays real disposal of almost all cases beyond the situation before this procedure was changed.  I say almost all cases, because the rule supposes that an applicant has had a fair and complete hearing on a second action, made Final, but an examination of file histories will show that only a very few cases are resolved to allowance or abandonment on the second action.  First actions are rejections in a preponderance of cases, for reasons I would be happy to go into in another blog, and nearly all examiners find a way to impose the Final after a first response.  So an applicant gets one bite of the Apple, then the case gets parked for at least several months and in allot of cases more than a year.  Any reasonable analysis will show that three, four or more rounds are typically needed to bring a case to a clear understanding of the issues on the merits.

The result is that the new RCE treatment has, and will continue to build the backlogMore examination is needed, not less.

Donald Boys 35,074

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