Professor Dennis Crouch asked in a post today on his Patently-O blog for comments on why applicants file so many requests for continued examination. Specifically, he wanted to know readers’ thoughts on the following questions:
1. What is your explanation for the large number of RCE filings?
2. What can the PTO do help prosecution conclude more quickly (on average) and reduce the number of RCE filings? (examiner behavior, PTO procedures, negotiation techniques, patent application format…)
3. Do some patent attorneys disagree with my notion that the amendment process is a negotiation?
I think that this is in important issue, and thought I would share with you my response to him:
First, I agree with you: it is a negotiation process. WIth a really good examiner and well-crafted application, an applicant will, more often than not, end up with a great patent. With a difficult or bad examiner, who knows what the applicant will end up with. Sometimes negotiations go quickly; sometimes they don’t. It’s not necessary someone’s fault when they don’t, and there is not anything you can do about it.
To answer the other questions…
The reason why we have so many RCEs is the “compact prosecution” system. OK, that might be an overstatement. But I think that it is fair to say that compact prosecution is an artificial construct that does not reflect the realities prosecution. Compact prosecution simply does not allow enough time for meaningful prosecution in many cases. The compact prosecution system effectively gives the applicant only one shot at addressing the issues raised by the examiner, and, for many cases, that’s simply not enough.
The only meaningful statistic is the number of actions per disposal. That is what counts in terms of resource demands. Thus, I submit that the issues are, how many actions should we allow to do a good job, and how can we make the process efficient?
There are a whole host of issues that affect efficiency: poorly drafted applications, bad searching, incompetent examiners (or poorly trained examiners); sometimes ludicrous claim interpretations given by examiners; not enough time given to examiners to do a decent job; spooked examiners; poor management practices at the PTO; the mentality of, when in doubt, reject; etc. Of course, these problems lead to more RCEs.
But, I also submit that compact prosecution and the RCE create inefficiencies. Once you file an RCE, both the applicant and examiner know that there are two more actions (in most cases) available. There is not as much incentive to reach agreement on the first action after the RCE — thus, the irony of compact prosecution leading to more resource utilization than perhaps would otherwise be necessary.
What is the right number of actions per disposal? It’s hard to say. It’s very common in other systems, most of which have no artificial limit on the number of actions, for there to be more than 2 or 3 office actions on substantive issues. Of course, this may be comparing pineapples to grapes, but I think it raises the issue of whether we are being realistic in expecting that every case should be disposed of in two office actions, with the applicant effectively having only one opportunity to raise the issues presented by the examiner.
I am surprised that there are not a lot more RCEs. I believe that the one reason that there isn’t is because applicants in many of the cases — I’d call them “portfolio case” since they are filed primarily only to provide bulk to the portfolio — are willing to accept unduly limiting claims in exchange for limiting costs. Looking at it another way, what this statistic says to me is that a majority of patent applications are probably not valued highly.
I understand that we have limited resources, but if you believe that patents are important, then we need to expend those resources. The number of actions that are necessary to arrive at an application of reasonable quality is what it is. (I don’t know what it is, but I am pretty sure that it is, on average, more than 2.) The issue is efficiency and whether the procedures and policies in the PTO are promoting efficiency.
So, ultimately, I think that you should be asking about how to make examination more efficient. Of course, applicants need to prepare better applications, and clients may need to give them more time to do that. Examiners need to do better job at searching. The PTO needs to train examiners on how to interpret claims, etc. But, I also think that we should consider retooling the current compact prosecution pratice.
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