CIVIL ENGINEERING & PATENT LAW  
This website illustrates how Civil Engineers may make greater use of the Global Patent System to Promote Progress in their Field.
The American Founders included Patent Rights in the United States Constitution to Promote Progress.
Request for Continued Examination (RCE)
U.S. Patenting
     After beginning examination of a patent application, including civil engineering subject matter, the Examiner usually issues a first nonfinal Office Action considering the substance of the Applicant’s patent claims in light of existing prior art, along with other requirements of the patent laws.  Although other Examiner actions may precede the first nonfinal Office Action, such as a restriction requirement requiring the Applicant to essentially break up a single patent application into different inventions, the first nonfinal Office Action constitutes the Patent Office’s first treatment of the substance of a patent application on the merits.  Although uncommon, the Examiner may allow all of the Applicant’s claims in the first nonfinal Office Action.  Typically, though, the Examiner will reject most or all of the Applicant’s patent claims in the first nonfinal Office Action.    

     After the Applicant responds with arguments or claim amendments, or both (see patent prosecution), the Examiner will either allow all of the patent claims or issue a final Office Action.  Also, in certain situations, the Examiner sometimes issues a second nonfinal Office Action to cure deficiencies in the first nonfinal Office Action.  The Applicant's filing fee (see US patent filing) basically covers the Office’s costs for issuing this first round of nonfinal Office Actions.  Once the Examiner issues a final Office Action, though, the Applicant faces additional USPTO fees and a limited number of options to continue patent prosecution.  The Applicant may appeal to the Patent Trial and Appeal Board (see Appeal, which costs money and may take several years), or may pay to remove the finality of the final Office Action by filing a Request for Continued Examination (RCE).       

     Filing an RCE with additional arguments and/or claim amendments currently costs the Applicant about $1000, but this price may almost double by 2013.  Usually, if the Applicant proceeds carefully and does not fall into certain traps that can cause the Examiner to issue another final Office Action in response to the RCE, the USPTO will usually issue another nonfinal Office Action or may allow all of the patent claims.  The Applicant may then file additional arguments and/or claim amendments in response to the nonfinal Office Action, the cost of which is essentially covered by the RCE fee.  The Examiner will then allow all of the patent claims or issue another final Office Action.  So, at this point, by paying the patent filing fee and one RCE fee (and being careful not to fall into the trap of receiving a final Office Action immediately subsequent to the RCE), the Applicant gets at least four Office Actions and the right to respond to the first three Office Actions.  Currently, the Applicant may continue the cycle of RCEs indefinitely, a procedure over which, as explained below, the USPTO has expressed some concern.    

     Because appealing to the Patent Trial and Appeal Board may be expensive and take several years, some practitioners view filing one or even more RCEs as useful, as long as the Examiner is responding reasonably to their arguments and claim amendments, and prosecution is advancing toward patent claim scope that presents sufficient value to the Applicant.  However, if rejected patent claims are ready for appeal in view of the prior art presented by the Examiner, and the Applicant can persuasively show the judges of the Patent Trial and Appeal Board that the Examiner erred in not allowing those claims, then appeal is appropriate.    

     The USPTO leadership, though, seems to view current RCE practice as contributing to the backlog of unexamined patent applications because the numerous RCEs filed by Applicants apparently distract Examiners from picking up new patent applications.  The USPTO seems to have moved in recent years, since roughly 2009, to make RCE practice less attractive to Applicants.  In late 2009, the USPTO apparently changed its docketing procedures, particularly with respect to the Examiner’s “special new” docket, so that Examiners generally can wait longer before picking up recently-filed RCEs.  The USPTO also seems to have adjusted its productivity requirements for Examiners, assigning fewer productivity points to Examiners for working on Office Actions that follow an RCE filing.  And, in probably the most dramatic disincentive against RCE practice, the USPTO has proposed nearly doubling the cost for a second (or any further) RCE filing, though the USPTO seems to be proposing to leave the first RCE filing cost at about $1000 (as of March 19, 2013, the USPTO raised the fee for filing a first RCE to $1200, and the fee for filing a second or subsequent RCE to $1700).      

    
So, it seems clear that the USPTO’s RCE initiative attempts to balance the usefulness of RCEs to advance prosecution against the backlog contribution of RCEs by bogging down Examiners with indefinitely prosecuted cases.  In effect, the USPTO seems to be saying that if the Applicant cannot get close to allowable patent claims after seeing four Office Actions, such slow progress warrants additional fees for bogging down the patent system.  This probably amounts to a good balancing act, because more draconian efforts to limit RCE filing may just increase the backlog of appeals to the Patent Trial and Appeal Board.  Specifically, raising RCE costs even higher than the USPTO’s current proposal could incentivize Applicants unhappy with an Examiner’s rejections to file an appeal in situations in which they would have previously filed another RCE to further advance prosecution.  So, drastically higher RCE costs could effectively shift some prosecution that may have ended with an inexpensive RCE into the Patent Trial and Appeal Board's appeal backlog.  But, the current USPTO proposal for keeping at least the 1st RCE relatively cheaper may succeed in addressing backlog issues without disrupting the RCE’s beneficial effect of pushing patent applications toward patent issue.

 

 

Tappan Zee Bridge in New York
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