April 1, 2013, Deputy Commissioner Faile sent an email
message to all U. S. Patent and Trademark Office (USPTO) patent examiners
regarding a Memorandum
of Understanding (MOU) between the Patent Office Professional Association
(POPA), the union that represents patent examiners, and USPTO management. Part
of this MOU is directed to changes in request for continued examination (RCE)
production work credit for the remaining fiscal year 2013 (ending on September
30, 2013) to incentivize examiners in an effort to reduce the backlog of RCEs.
Under the new MOU, patent examiners will receive the same distribution of work
credit for first action examination in all RCEs as for other new unexamined
Initially, the USPTO's examiner production system provided equal credit for
first actions on the merits (FAOM) in a new unexamined application and for each
first action after the filing of an RCE. In other words, the examiner would
receive the same work production credit for a first action, irrespective of
whether the first action was after an RCE or issued in a new unexamined
application. However, the backlog of new unexamined applications has continued
to grow. A few years ago, USPTO management changed the patent examiner
production system to trim down the incentive for examiners to force applicants
to file RCEs. The modified production system provides a larger amount of work
credit for the FAOM in a new unexamined application than for a first action
after the filing of the first RCE, and even less work credit for the first
action after the filing of any subsequent RCE. Additionally, RCEs were no
longer placed on the examiner's Regular Amended docket, which meant the
examiner did not have a defined "management deadline" wherein an RCE must be
examined. These actions effectively disincentivized examination after an RCE
was filed. Consequently, the backlog of RCE applications has swelled in the
last few years with no sign of abatement.
In March 2013, the USPTO conducted roundtable meetings with the public in an
effort to identify changes in USPTO practices to reduce the ever-growing RCE
backlog. The resulting MOU presents patent applicants with the opportunity to
reach out to examiners with corresponding RCEs within this fiscal year while
the examiner is incentivized to examine and identify allowable subject matter.
It is unclear how RCEs will be examined after September 30, 2013.
For more information, please contact Fitch Even partner Kendrew
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