美國專利商標局在2013年,將RCE和CA之間的小時點數改為相同價值,並同時藉著讓第二次RCE調整為比提出CA案更為昂貴(CA案費用為1,600美元,RCE案為1,700美元),來回復審查委員的鼓勵機制。然而,在這種作法下仍然出現一個有趣的面向——審查委員對於RCE案有一些特定排案時程。如果審查委員擁有5件或更少RCE案,則上述所討論與小時點數有關的鼓勵機制,可能仍然是適用的。在這種情況下,該審查委員審查RCE案的動機並不與申請人相等,這意味著RCE案仍然會被忽略。由於排案數量並不是公開資訊,與審查委員討論他自己/該技術領域單位,對於CA案和RCE案的處理方式為何,以分辨他們的鼓勵措施,對於讓申請人得以在獲得相關資訊後再據以作出決定而言,仍然會是有價值的。美國專利商標局還另外推出了新的方案,來協助緩解RCE積案情況,例如最終審查意見書後的再考量試行計畫(After Final Consideration Pilot program)。
Consideration about patent office incentive systems Stefano John NAIP Education & Training Group / European Patent Attorney
When prosecuting a patent application before the patent office, one has to take into account of many different aspects to obtain what one wants and in the manner one wants. The patent office sets up incentives and deterrents, or actual vetoes, to try and direct patent applicants and agents in taking certain decisions or prosecuting their application in a certain manner. Generally this is done to expedite prosecution and reduce patent office application backlogs. As anybody who has looked at fee sheets for the EPO or USPTO, the incentives or deterrents can make a notable difference to the overall cost of obtaining a granted patent. The point of this article is to highlight another aspect which should be taken into consideration – the incentives applied by the patent office to examiners themselves.
This can be done by using the example of the USPTO’s approach to RCE backlogs.
USPTO examiners must obtain counts to justify their position as examiners at the USPTO. In almost all cases, the count is 40 hours/week, though more complex art requires fewer counts over a certain period of time. The USPTO gets 2 hour counts per application: 1.25 hour count for issuing a first Office Action (1stOA) and 0.75 hour count for issuing a notice of allowance or 0.75 hour count for issuing a declaration of application abandonment. This means that the examiner is incentivized to issue a 1stOA, and is also incentivized to issue a notice of allowance. Abandonment depends entirely on the applicant’s own motivations and is out of the examiner’s control.
The examiners get zero hour counts for Subsequent Non-Final Office Actions, Final Office Actions (Final OA) and Advisory Actions. The fact that the examiner is not incentivized to issue such statements may help the applicant understand why the examiner may be less willing to issue an Advisory Action or a Subsequent Non-Final Office Action.
But why would the examiner then be incentivized to issue a notice of allowance and not a Final OA instead (compare 0.75 to 0 hour counts respectively)? The reason is that the USPTO has set up controls and checkpoints in other parts of the system to check that the examiner do not just allow any patent through to obtain more hour counts. In some cases, examiners are asked to justify their allowance to their superiors and the consequences for them can be serious if they are wrong.
How the examiner’s incentives may affect patent applicants if they are not aligned can be seen by the USPTO’s approach to RCE backlogs. In case one is not aware, after an examiner has released a Final OA, in the period of 2010-2013 the Applicant could normally choose to proceed with his patent application in one of 3 ways: Request for Continued Examination (RCE), Continuation Application (CA) or file a petition for review by the PTAB. We will ignore filing a petition for review because it is not really pertinent to the example below and applies to cases where one does not want to proceed with normal prosecution.
In 2010, the USPTO noticed a slight increase in the number of pending RCEs before the USPTO. In 2011, the costs of filing an RCE were cheaper than filing a CA. The director of the USPTO at the time, Kappos, tried to reduce the number of RCEs by changing the incentives to the USPTO examiner. He changed the hour counts for RCEs by reducing them from 2 hour counts to 1.75 for 1st RCE (1.0 + .75) and 1.5 for following RCEs (0.75 + 0.75). CA, as a separate application, would retain the 2 hour count for fist application. He also allowed examiners to delay examining RCEs without direct penalty. The idea was to incentivize examiners to accept CA applications by making examination of RCEs less profitable for the examiner. This failed spectacularly because the incentives were all directed internally. There was a clear disconnect between deterring patent examiners and deterring patent applicants. Patent examiners had been incentivized to accept CA over RCEs while the patent applicants continued filing RCEs, and only filing CA for time-sensitive applications, mainly because of the fee difference. Said filed RCEs would be ignored in this period and remain pending to the detriment of patent applicants and the patent office and only increase the backlog. That is why the backlog of RCEs grew roughly 6 times in the period 2011-2013.
The USPTO in 2013 changed its incentives by restoring the examiner incentive to parity in hour counts between RCEs and CAs and by realigning the fees as well to make 2nd RCEs more expensive than filing CAs ($1700 compared to $1600). However, there is an interesting aspect that still remains – the examiner has specific dockets for their RCEs. If the examiner has 5 or less RCEs, the incentives regarding hour counts discussed above may still kick in again. In which case, the examiner’s incentives to examine a RCE may not be aligned with that of the applicant, which means that the RCE would remain ignored. As docket numbers are not public information, it might be worth discussing with the examiner what his/the art unit’s approach to CA and RCE is to discern their incentives and make your decision once you have such information. The USPTO has also introduced new programs to help alleviate the RCE backlog, such as the After Final Consideration Pilot program.
The above story regarding RCEs is an example of the advantage of understanding how examiners are incentivized to prosecute a patent application. If one filed an RCE in the period 2011-2013, which there were many as they were cheaper than CA, the USPTO examiner was likely to leave it pending for longer as his incentives were different from the applicant’s. At present, such incentive is more difficult to understand because it relies on the pending docket numbers (5 RCE or less) and such information is not public, but this leads to another more general conclusion – to make sure that the patent applicant’s choices are aligned with the examiners’ incentives it is important to understand how patent offices work and this is where using experienced patent practitioners can help.
Author:
Stefano John, European Patent Attorney
Experiences:
European Patent Attorney, Bryers
Trainee European Patent Attorney, Bugnion SpA
Trainee European Patent Attorney, Notabartolo & Gervasi
Internship, EPO