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29th March 2012 (0 Comments)

How to Reduce the USPTO Backlog:

 

I recently authored a blog concerning the new RCE practice and its effect on the backlog of cases in the USPTO.  Treating a first RCE substantially as a new case has to have the effect of substantially adding to the backlog.  I have to admit a bit of mea culpa on the part of practitioners, however.

At a time more distant in the past than most present practitioners remember, patent cases were typically three or four pages of specification, two or three drawings, and just a few claims.  This situation has evolved to where cases today average twenty to thirty pages with ten or more drawings, and usually twenty or more claims, and a significant number of cases filed are much larger with 100 plus pages and 100 plus claims.

Most applicants and practitioners do not seem to be aware of the contribution that this trend has made on the growth of the USPTO backlog.  Consider if you will, that the examiner is obligated first to ensure that the claims in a case recite a single patentable invention.  This means that if there are several independent claims, then the examiner may have to invoke a restriction requirement.  If the applicant or practitioner does not field a telephone call to make an election, then the examiner has to send out a formal restriction as an action.  The time this takes, and the applicant’s response, with which the examiner must deal, has a very negative impact on the overall time that will be involved in the prosecution for the case.

The examiner is also obligated to impose species restrictions if necessary.  This has the same effect as the unity of invention restriction above.

Once the restrictions are taken care of, the case advances to consideration on the merits.  The examiner has to deal with each and every claim, because every claim, if properly drawn, whether independent or dependent is a different invention.  So if there are six claims, the examiner’s job has a work value of X.  If there are thirty-six claims, the examiner’s job is 6X, six times the time and effort. Moreover, the examiner may be able to reject the independent claims as anticipated, but may well have to go to obviousness combinations for many of the dependent claims.  The work may be more than 6X.

 

Now let’s look at this from the practitioner’s point of view for the case with thirty-six claims.  The practitioner will get a multiple page action with multiple rejections dealing with every claim as an individual invention.  It has to be so if the examiner follows the law.  But the practitioner focuses just on the independent claim or claims, because he or she knows that if the independent claim can be shown to be patentable, as-is or amended, the depended claims are patentable at least as depended from a patentable claim.  Far more often than not, the practitioner just about completely ignores the rejections of the depended claims.  This means that a great deal of the work the examiner is obligated to do, and must do, is for nothing, and only serves to increase the time and effort necessary for the Office to examine the application, which, given the Office’s largely inflexible resources, just adds to the backlog.

Let’s assume that in the “normal” situation, the applicant and practitioner prepare and file twenty claims, with two independent (because they are allowed that number for the basic filing fee).  If only the two independent claims were to be filed, the examiner’s workload would be nominally 1/10 of the job for the twenty claims.  This is overblown, of course, because there are “fixed costs” like the search and restriction considerations.  But it is easy to see that if applicants and practitioners on a broad scale were to severely limit the number of claims that they file in a case, the work could easily be cut in half, not just for the Office, but for the applicant and the practitioner as well.  And, further, there is no real detriment to the applicant and inventor, because depended claims could be added (with a little mutual cooperation) after allowance of one or two independent claims.

The question now becomes: “Will practitioners voluntarily cut down substantially on the number of claims they file to speed up the process of prosecution?”  My view is “Not likely”, because most law firms and even independents work on a “billable hours” model, and the bigger application with more claims, and the bigger actions with equally robust responses support more billable hours, and serve to convince the client that the representative is going to great lengths to represent the client’s interest.  Further, even if practitioners were to opt more for this approach, not many clients understand the process well enough or in a way to see that their interests would actually be better served.  The clients, in most cases, would not stand for it.

So the answer here is, that if the USPTO actually has an interest in reducing the backlog and making the prosecution process workable, the Office will work toward limiting the number of claims, both independent and dependent that an applicant may file.  In the same stroke the Office could ensure that an applicant, after allowance, would be allowed to enter depended claims to issue with the independent claims allowed.

 

Donald Boys 35,074

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