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Thursday July 20, 2006
More Exam Cycles; More RCEs
Demand for "better" patentsIn light of the high cost of patent litigation and ever increasing damage awards, industry has been crying out for better patents. What is a "better" patent? The definition of what a better patent is may depend on what side you end up on after a hotly contested patent litigation or settlement. But, almost everyone agrees that better patents are those that are valid in view of the prior art and are enforceable. This consensus has been echoed back to the United States Patent and Trademark Office (PTO), and the PTO has improved aspects of their searching and examination procedures. PTO Response, and additional examination cycles In response to the demand for better patents, the PTO has, over the past few years, placed additional hurdles and check points in the examination path to weed out "bad" patents. In some art units, the PTO has been implementing the "second set of eyes" approach to confirm examiners' decisions to allow applications. More recently, examiners in the software and hardware arts have informed us that "independent panel reviews" are required once an application is believed to be ready for allowance by the examiner. As background, the PTO examiners are organized in a number of technology centers. Each technology center has a number of art units. Each art unit has a group of examiners, primary examiners, and a supervisory patent examiner (SPE). Each technology center also employs about four quality assurance (QA) consultants. These QA consultants are available to assist examiners in technology and technical examination issues. The independent panels are typically composed of 2-3 SPEs from similar art units of a given technology center and/or QA consultants. This informal independent panel is generally asked by the examiner to review the case and confirm whether or not the panel agrees with the examiner's determination. If the panel agrees, the examiner will proceed to issue a notice of allowance. If agreement is not reached, the panel may recommend that the examiner conduct another search and issue another office action. Based on our informal questioning of examiners, we were told that examiners are required to do the additional searching and issuance of new office actions on their own time. It is unclear if the independent panel process is a required step, but it appears that more examiners are either opting to or are required to consult the panel before allowing a case. Also, based on our independent questioning of some examiners, it appears that examiners are likely to request the second review by the independent panel in order to support their decision to allow a case. If the panel agrees with the examiner, the examiner will have a better argument for "not making a clear error" if the case is randomly selected for review and flagged as having an error by a quality engineer (QE). To further ensure that better patents are being issued, the PTO continues to use QEs, which used to be referred to as quality review checkers. If an examiner's case is randomly selected by a QE and the QE determines that an error occurred, then the examiner's performance quality may be questioned. However, if the examiner had a panel review, and the QE still found clear error, then the examiner can contend that the panel also agreed with the examiner's conclusions. As noted above, additional searching and the preparation of a new office action is said to be on the examiner's own time. However, being that examiners are rewarded based on their productivity, examiners will commonly look to see if the applicant amended the claims in the last office action. Although the claim amendments may have been made to overcome the initial office action rejections, the examiner will likely issue a final office action with new art. In the final office action, the examiner will contend that the applicants amendments raised new issues which necessitated the new search. As is commonly the case, and supported by the M.P.E.P., if any amendment (minor as it may be) is made by the applicant, it will be at the examiner's sole discretion to hold that the amendment raised new issues. Although, petitioning the director to contend that amendment did not raise new issues is an option.
Prosecution Results
In theory, the first Office Action is designed to provide a complete search along with the examiner's concise reasons for rejecting, objecting or allowing the claims. This theory is, however, becoming more of a myth than reality. As the pressure for better patents builds in the PTO, the result will be increased prosecution cycles. In many regards, additional searching will tend to expose more prior art and in turn allow the claims to be crafted so as to be patentable over the prior art teachings. Although this sounds good, more searching and examination comes at a price. Applicants desire to claim the invention as broadly as the prior art will allow. However, because the claims are initially drafted in view of the art best known to the inventor and any basic search, the as-filed claims are generally rejected over PTO searched art. Upon examination of the rejections, the applicant will commonly need to amend the claims to overcome the teachings provided by the prior art. After the amendment, the prosecuting attorney usually feels that a notice of allowance should be issued.
At this point, the examiner may be: (a) convinced by the amendments and remarks; or (b) unconvinced. In (a), the examiner may be required to visit the independent panel and attempt to convince the individuals that allowance is in order. If the panel is not convinced, the examiner may be forced to do a new search as noted above. If the applicant receives a final office action with new grounds of rejection, the only choice will be to appeal or file an RCE with additional amendments. In (b), as was more normally the case, the examiner may simply hold his/her ground and require the applicant to either appeal or file an RCE with additional clarifying amendments.
Result: More RCEs Why are more RCEs required? The answer is actually quite simple--to issue "better" patents. If examiners were not required inject the second set of eyes, then determinations of patentability would lie in the hands of a single individual. However, given that trained professionals frequently arrive at differing points of view, the additional examination will necessarily require applicants to deal with examination that presents new art or new arguments at later stages in prosecution. That is, when a case is under final and a new grounds of rejection is received (whether it be based on new art or a new combination), the applicant is faced with only two options to keep the case from going abandoned. One option is to appeal and the other is to file an RCE and address the new grounds. Filing an appeal is an option, but not when the final office action presents new grounds. To reduce the number of RCEs, the PTO needs to change the rules under which examiners are compensated or rated for efficiency. Of course, if the panel requires a new search, the examiner can issue a second non-final office action. However, given that the examiner does not get credit for second non-finals, the examiner is generally going to issue a final rejection with new art. As a result, the applicants must deal with the situation or somehow influence the PTO to change its examiner productivity rating procedure. This sounds like a nice solution, but the situation is unlikely to change. As a casual observation, it appears that the PTO increased its diligence by initiating more thorough examining procedures, but possibly overlooked the need to provide examiners with more structured credit time to handle the increased work. For instance, the examiners could be given credit for working on second non-final office actions.
Suggested Prosecution
A: One RCE, then Appeal
It is very common that at least one RCE will be needed in a case, especially if the examiner is holding his or her ground and the art is close. However, when an RCE is filed, it is important that the best amendments that are accepted by the client are made and the best arguments are presented with the RCE. In response to the RCE and amendment, the examiner may issue a non-final office action. Again, if clarifying amendments are deemed necessary, amendments should be made, as the next action may be a second final office action. At this point, we generally recommend responding to the final rejection, requesting reconsideration. If an Advisory Action is received, after the first RCE, in most cases we recommend appealing. B: Independent Panel after first RCE: file Second RCE, then Appeal If the independent panel forces the examiner to do yet another search after the first RCE is filed, the applicant may be stuck in a difficult position. The examiner has unfairly presented new art late in the game, but the examiner may have been forced to do another search, when the examiner had actually intended to allow the case. In this situation, if the new art is on point and may present a problem for patentability, the applicant may need to present another amendment. However, the only way to have the new amendment considered is to file a second RCE. If a second RCE is filed, we would recommend again to file the best amendment and arguments that would put the case in condition for appeal. Consequently, the independent panel review in many cases will necessitate the second RCE. If more than two RCEs are needed, then serious consideration should be given to the case to ensure that patentable subject matter actually exists. Conclusion It is our observation that RCEs are more common than in the past, but in view of the quality concerns raised by industry and the public, the PTO's procedures leave applicants with the undesirable side effect of more RCE filings.
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