Did your patent examiner send you a “Final Rejection?” Relax, it’s not actually final. It’s how the USPTO gets “request for continued examination” (RCE) money!
The economics of patent examination: The USPTO gives examiners between 14 to 30 hours to examine patents. The exact amount of time differs according to the patent’s complexity and the examiner’s seniority. This is the total time: time to understand the application, research prior-art, write a critique, conduct interviews, and respond to applicant rebuttals.
This official time quota is unrealistically low. The USPTO lists the examination time quotas for various types of inventions as:
- Fishing lure: 16.6 hours
- Immunotherapy: 25.9 hours
- Satellite communication: 27.7 hours
So, the official examination time difference between trivial and mind-numbingly complex patents is about 10 hours! Is there any wonder why office actions tend to be formulaic?
Examiners also have quality goals as well. The USPTO evaluates examiners on a “count” system. This gives examiners financial incentives to meet their quality goals within these time objectives.
Resetting the time clock
To keep the system from breaking down, the USPTO allows examiners to “reset the clock.” Under this “reset” system, your initial filing fee buys you the first round of examination. It also gets you an analysis of your initial rebuttal, and one “final” decision. After this, if you want to keep playing, you have to put more money in the slot.
The “deposit coins to play again” process is simple. You must write an adequate “RCE-response” to the previous “final rejection.” Then, when you file this RCE-response, you also file a “request for continued examination” (RCE) form and pay an RCE fee. The RCE fee is slightly less than the initial filing fee, but you get the idea. Essentially you are purchasing another block of examination time.
The count system is structured to give examiners some mild incentives when it comes to RCE. Specifically, the examiner comes out a bit ahead if they decide to accept the applicant’s RCE-response. So, the next office action response after the “final rejection” is often an excellent time to try to make a deal. A good way to do that is to schedule a telephone interview. Then send the examiner an informal draft RCE-response, and discuss. Examiners can’t tell you what to do, but you can often get hints about what sort of changes might be helpful.
First RCE filings are common, and second RCE filings are not unusual. However, beyond that, consider other options such as extrinsic evidence, or filing an appeal.
Image: Coin Acceptor by Arthur Shlain from the Noun Project