[Federal Register Volume 77, Number 235 (Thursday, December 6, 2012)]
[Notices]
[Page 72830]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2012-29546]


-----------------------------------------------------------------------

DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

[Docket No. PTO-P-2012-0043]


Request for Comments on Request for Continued Examination (RCE) 
Practice

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Request for Comments.

-----------------------------------------------------------------------

SUMMARY: The United States Patent and Trademark Office (Office) 
currently has a backlog of over 90,000 patent applications that have 
not been examined since the filing of a Request for Continued 
Examination (RCE). This backlog diverts resources away from the 
examination of new applications. The Office is continuing its efforts 
to reduce the RCE backlog. For example, the Office recently implemented 
a pair of pilot programs--the Quick Path Information Disclosure 
Statement (QPIDS) pilot program and the After Final Consideration Pilot 
(AFCP)--designed to reduce the need to file an RCE. The Office is now 
soliciting public feedback in an effort to better understand the full 
spectrum of factors that impact the decision to file an RCE. The Office 
is providing three different avenues for the public to provide their 
feedback on RCE practice: (1) Through the submission of written 
comments by electronic mail message over the Internet or by postal 
mail; (2) through the submission of written comments using a Web-based 
collaboration tool called IdeaScale[supreg]; and (3) through a series 
of roundtables that the Office is planning to conduct. The Office plans 
to use the information it obtains to design additional programs and 
initiatives aimed at reducing RCE filings and the RCE backlog.

DATES: Comment Deadline Date: Written comments must be received on or 
before February 4, 2013.

ADDRESSES: Comments should be sent by electronic mail message over the 
Internet addressed to: [email protected]. Comments may also be 
submitted by postal mail addressed to: United States Patent and 
Trademark Office, Mail Stop Comments--Patents, Office of Commissioner 
for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the 
attention of Raul Tamayo. Although comments may be submitted by postal 
mail, the Office prefers to receive comments by electronic mail message 
over the Internet in order to facilitate posting on the Office's 
Internet Web site.
    The comments will be available for public inspection at the Office 
of the Commissioner for Patents, located at Madison Building East, 
Tenth Floor, 600 Dulany Street, Alexandria, Virginia. Comments also 
will be available for viewing via the Office's Internet Web site 
(http://www.uspto.gov). Because comments will be made available for 
public inspection, information that is not desired to be made public, 
such as an address or phone number, should not be included in the 
comments.

FOR FURTHER INFORMATION CONTACT: Raul Tamayo, Legal Advisor, Office of 
the Deputy Commissioner for Patent Examination Policy (telephone (571) 
272-7728; email [email protected]). Alternatively, mail may be 
addressed to Raul Tamayo, Office of Commissioner for Patents, Attn: RCE 
Outreach, P.O. Box 1450, Alexandria, VA 22313-1450.

SUPPLEMENTARY INFORMATION: The Office has gathered a variety of 
statistics related to RCEs, including the fraction of applications (by 
technology classification) containing at least one RCE, and the 
fraction of applications (out of a random sample) in which no 
submission under 37 CFR 1.116 was filed prior to the filing of the RCE. 
These statistics can be viewed at http://www.uspto.gov/patents/init_events/rce_outreach.jsp, and may help inform comments responsive to 
this request for comments (RFC).
    The Office has generated the following list of questions concerning 
RCE practice to further inform comments responsive to this RFC. 
Responders to this RFC can choose to address as many of these questions 
as desired. The Office is particularly interested in receiving 
information that facilitates an understanding of filing strategies 
related to RCEs.
    (1) If within your practice you file a higher or lower number of 
RCEs for certain clients or areas of technology as compared to others, 
what factor(s) can you identify for the difference in filings?
    (2) What change(s), if any, in Office procedure(s) or regulation(s) 
would reduce your need to file RCEs?
    (3) What effect(s), if any, does the Office's interview practice 
have on your decision to file an RCE?
    (4) If, on average, interviews with examiners lead you to file 
fewer RCEs, at what point during prosecution do interviews most 
regularly produce this effect?
    (5) What actions could be taken by either the Office or applicants 
to reduce the need to file evidence (not including an IDS) after a 
final rejection?
    (6) When considering how to respond to a final rejection, what 
factor(s) cause you to favor the filing of an RCE?
    (7) When considering how to respond to a final rejection, what 
factor(s) cause you to favor the filing of an amendment after final (37 
CFR 1.116)?
    (8) Was your after final practice impacted by the Office's change 
to the order of examination of RCEs in November 2009? If so, how?
    (9) How does client preference drive your decision to file an RCE 
or other response after final?
    (10) What strategy/strategies do you employ to avoid RCEs?
    (11) Do you have other reasons for filing an RCE that you would 
like to share?
    Interested members of the public can provide the Office with their 
feedback on RCE practice through the submission of written comments by 
electronic mail message over the Internet or by postal mail sent to the 
corresponding address noted above. Feedback on RCE practice can 
alternatively be submitted using a Web-based collaboration tool called 
IdeaScale[supreg]. The tool allows users to post comments on a topic, 
and view and respond to others' comments. In addition, users may vote 
to indicate agreement or disagreement with a particular comment. 
Information on how to use IdeaScale[supreg] to comment on RCE practice 
is available at http://www.uspto.gov/patents/init_events/rce_outreach.jsp.
    Finally, the Office is planning to conduct roundtables to obtain 
input from diverse organizations and individuals on RCE practice. 
Further information on roundtable dates and how to participate in a 
roundtable on RCE practice will be available at http://www.uspto.gov/patents/init_events/rce_outreach.jsp.

    Dated: November 30, 2012.
Teresa Stanek Rea,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy 
Director of the United States Patent and Trademark Office.
[FR Doc. 2012-29546 Filed 12-5-12; 8:45 am]
BILLING CODE 3510-16-P