Fitch Even IP Alert: USPTO Initiates Incentives for Examiners to Reduce RCE Backlog

Fitch Even IP Alert: USPTO Initiates Incentives for Examiners to Reduce RCE Backlog

by Eggerton A. Campbell 

On 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 applications. 

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 H. Colton.

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