Patent Examiners Learn New Way to Count. Will it Add Up to Fewer RCEs?

New USPTO Commissioner David Kappos announced on September 30 a proposal to revamp the count system that patent examiners work under to determine the time allotted and credit for their work on each application. Previously Kappos announced at the IPO annual conference in Chicago that he was working on a proposal that would help both examiners and applicants. He said,“[w]e’re going to have a count system that helps everyone get to the point without requiring two or three [requests for continued examination or] RCEs.” This proposal is a joint effort from a task force of senior managers in the patent office and the union of patent examiners (Patent Office Professionals Association).

One of the key goals of the proposal is to give patent examiners more time to do quality work. In his speech in Chicago, Kappos admitted that the quality of the patent office is not where it should be, “I won’t stand up here [with] charts and tell you how perfect our quality is. I know that quality is not where it should be, even if the agency’s past quality standards indicated otherwise.”

The current count system incentivizes examiners to initially reject everything, even if it is patentable, so that applicants have to use an RCE to get an application allowed.

Another area he hopes this proposal will improve is to, “encourage examiners to identify allowable subject matter earlier in the examination process.” This will really help applicants get a feel for what is patentable right away, and what is maybe not worth fighting over. He will give more credit for a first office action on the merits so examiners will spend more time up front and not just give a cursory rejection to get a point.

Currently the count system incentivizes the examiners to initially reject everything, even if it is patentable, so that applicants have to use a request for continued examination (RCE) almost every time to get an application allowed. This gives the examiner 2 counts for the first application and 2 more for the RCE. The new system will only give 1.75 counts for a first RCE and 1.5 for a second and subsequent RCE. Kappos hopes this will “reduce examiner reluctance to allow applications.”

In addition to giving the examiner more time to look at the application, the task force’s proposal also gives the examiner time to initiate an interview with the inventor or patent practitioner. This will help the examiner to more fully understand the technology they are examining, and will hopefully lead to more allowed applications.

This proposed change to the count system is in line with what Eric Chen suggested in his NC JOLT article last year. Other blogging members of the IP community have also commented that this new proposal is long overdue and will hopefully help the situation. Gene Quinn of IPWatchdog said,
“In the past I have referred to this as the examiner quota, and like so many others have been begging the Patent Office to make changes and address this matter so that it would be unnecessary, or less necessary, for examiners to manipulate the system and require needless filings (typically RCEs) by applicants and their representatives. . . Hopefully more realistic work requirements will streamline the process by giving examiners more time and putting an end to needless additional filings that only drag out the entire process to the detriment of the applicant and industry.”