Proposed rule on continuing applications ignores significance of RCE growth

Of Quillen and Webster's papers on "patent grant rate," one should recall that the initial paper published in 11 Fed. Cir. B.J. 1 was a strong attack on continuing applications:

Abolition of continuing applications would permit the PTO to improve its management processes by enabling it to obtain final decisions as to the patentability of pending applications and by eliminating the ability of applicants to reimpose the same work upon it by filing a sequence of continuing applications. n83 The consequent reduction in the PTO's workload--more than one-fourth of application filings are continuing applications--should make additional resources available. These resources, in turn, could be applied to the more thorough examination of original applications, or enable the PTO to reduce the size, and cost, of its examination staff. But legislation would be required to eliminate the statutory authority for continuing applications, including the recently adopted RCE. n84

At the time of the first paper, Quillen and Webster did not have data on RCEs. As later became apparent, RCEs, rather than continuation applications, are the predominant form of continuing application. Applicants file RCEs because agreement has not been reached on final claim form; applicants do not file RCEs to try to ensnare a competitor's product by re-drafting initially-filed claims.

As pointed out in 88 JPTOS 743: Continuation and continuation-in-part applications filed pursuant to 37 CFR 1.53 comprised 11.6% of all applications filed in FY 2005. Requests for continued examination (RCEs filed pursuant to 37 CFR 1.114 and in which an applicant cannot switch inventions) comprised about 14% of all applications filed in FY 2005.

[which noted: See Lawrence B. Ebert, Comments, at http://www.uspto.govlweb/officeslpac/dapp/opla/comments/fpp_continuation/ebert.pdf [In FY 2005, RCEs were the single most abundant "continuing" form, 52,000 of 384,228 (13.5%). All continuing forms combined (including RCEs) comprising 115,000 of 384,228 (30%). There were 44,500 cons and cips. Second, and subsequent, continuing applications (including RCEs) comprised only 5.7% of all applications.]]

Of the proposed rule on continuing applications, some version of which passed through OMB this week, 88 JPTOS 743 noted: Thus, if fully implemented, the rule would not resolve the application backlog problem.

Further, there is some rumor that a revised version would allow 2 continuations and 1 RCE per application. HOWEVER, as the numbers illustrate, it is RCEs, not continuations, which are the most used continuing form (and which are growing at the fastest rate). The fact that RCEs are growing as the dominant form tells us that there is not enough time to come to a meeting of the minds in one prosecution cycle for a number of applications. This observation calls into question the validity of the text: "...enabling it to obtain final decisions as to the patentability of pending applications and by eliminating the ability of applicants to reimpose the same work upon it by filing a sequence of continuing applications."

In filing RCEs, applicants are not "reimposing the same work upon the USPTO"; they are trying to get a resolution on the initially-filed application, which most likely involves discussion of claims amended in response to the give-and-take of prosecution.

Although the proposed rules have gained tremendous inertia, the underlying rationale is based on a misunderstanding of what the problem is. The rules if adopted will not solve the backlog problem. The rules if adopted will merely channel the difficulty, manifested in the rapid growth of RCEs, into other channels less capable of dealing with the problem of a lack of time available to prosecute many cases.