1. 1 1 AIPLA Firm Logo American Intellectual Property Law Association Modifications to the USPTO Count System Sponsored by the Chartered Institute of Patent Attorneys Ron Harris, The Harris Firm AIPLA IP Practice in Europe Committee London, England March 10, 2014

2. 2 2 AIPLA Firm Logo Increase in RCEs 2009-2013

3. 3 3 AIPLA Firm Logo Two Reasons for RCE Backlog 2009-2011 slight increase in RCEs filed 2011-2013 examiner preference against RCEs –ironically caused by USPTO attempt to provide compact prosecution to eliminate/reduce RCEs incenting examiners to provide clear, quality examination instead of stringing along applicants with poor rejections not based on best art, to enhance their production numbers –appeal too expensive and time consuming

4. 4 4 AIPLA Firm Logo USPTO Counts: The Basics Examiners must obtain counts to stay employed –40 hours/week clock is almost* always ticking –more complex art requires fewer counts per bi-week An examiner gets 2.0 counts for: –first non-final Office action (1.25), and –notice of allowance (.75) or –abandonment (.75) An examiner gets zero counts for –subsequent non-final actions –final Office actions –advisory Office actions * restrictions, interviews

5. 5 5 AIPLA Firm Logo 2011-2013 RCE Inflation RCEs worth fewer counts –less credit for RCEs 1 st RCE: 1.75 (1.0 +.75) instead of 2.0 2 nd-Nth RCE: 1.5 (.75 +.75) instead of 2.0 no longer on expedited amendment docket –goal was to reduce entire backlog examine oldest effective date favors first action continuing applications because they get 2.0 full counts –unless an RCE is probably allowable and the applicant calls to request examination (case-by-case).

6. 6 6 AIPLA Firm Logo Growth of RCE Backlog Examiners favored continuations over RCEs –CON/CIP Office actions ~2-6 months –RCE Office actions more than a year (backlog) Applicants filed continuations for time-sensitive cases and to simply to obtain a timely patent –unless wanting to lengthen pendency to preserve already-accrued patent term adjustment to claim competitor’s product RCE backlog grew substantially

7. 7 7 AIPLA Firm Logo (1) 3/2013-9/2013 De-inflation RCEs were again worth the same as new cases and continuations / divisionals 

8. 8 8 AIPLA Firm Logo (2) 9/2013-2014 ad hoc RCE Deflation Examiner-by-examiner ad hoc re-weighting –RCEs worth fewer counts only for examiners with less than 5 RCEs on new, special “RCE” docket RCEs no longer on same docket/tab as NEW and CON cases –if examiner has 5 or more RCEs on his/her docket, RCEs worth the same as other cases Less easy gamesmanship by applicants –individual examiner docket relatively hidden –less incentive to prefer filing continuation 1 st RCE cost = $1200 2 nd RCE cost = $1700 continuation cost = $1600

9. 9 9 AIPLA Firm Logo (3) Quick Path IDS (a/k/a “Q-pids”) Pilot IDS not reviewed after allowance or final action unless there is a 3-month statement and IDS fee –if no 3-mth statement, can file IDS/fee b4/w issue fee* No need to file RCE if IDS does not raise an issue to reopen Reopen prosecution if IDS does raise an issue IDS not reviewed after issue fee paid unless RCE and 1.312 petition filed –if 3-mth statement, can file e-petition to withdrawal and cond’l RCE after issue fee (IDS, RCE and petition fees)^ Get RCE fee back if IDS does not raise an issue to reopen Get IDS fee back if IDS does raise an issue to reopen * 3 hours off the clock time for utility, reissue & plant / 1 hour for design ^ 3 hours off the click time for utility and reissue only

10. 10 AIPLA Firm Logo (4) After Final Consideration Pilot Applicant must narrow at least one independent claim after final Office action and file simple form Examiner given time off the clock to review –3 hours for utility / 1 hour for design patent –avoids examiner summarily “not entering” and issuing an advisory action –reduces requirement to file an RCE If not allowable, advisory action still issued at least examiner looks at the amendment

11. 11 AIPLA Firm Logo Tips for Applicants File continuations per your examiner’s RCE docket –Ask examiners about trends & attitudes in their art unit examiners generally love to talk to people (for a change) file according to your objectives Avoid RCEs by requesting –After Final Consideration –QPIDS for after final IDS filings 

12. 12 AIPLA Firm Logo Thanks for your attention. Questions? Ron C. Harris, Jr. The Harris Firm 922 N Street, NW, Suite 101 Washington, DC 20001 T: +1 202 470 0126 F: +1 202 478 2725 3-3-3 Higashiazabu, 3F Minato-ku, Tokyo 106–0044 T: +81 3 4455 7215 F: +81 3 6800 6868 www.harrisfirm.net