Understanding the Backlog Problems Associated with Requests for Continued Examination Practice

32 Pages Posted: 5 Sep 2015 Last revised: 25 Jan 2019

See all articles by Shine (Sean) Tu

Shine (Sean) Tu

West Virginia University College of Law

Date Written: August 8, 2015


One of the greatest problems facing the current patent administration is a long patent pendency period. This study focuses on Request for Continued Examination (RCE) practice, and its effects on the current patent application backlog problem. RCEs are used to continue prosecution after a patent examiner has issued a final rejection. However, now that RCEs are placed on an examiner’s special docket, some examiners may pick up prosecution one to two years after the last action. Accordingly, there are great inefficiencies that may be created by this delay, such as relearning issues and questions from the previous action, diminished value of examiner interviews, and a higher likelihood of transfer to a new examiner. This study suggests that the RCE problem may be much worse for some art units compared to others. Specifically, the RCE problem is unevenly distributed between certain art units with technology center 1600 (biotechnology and organic chemistry) suffering the most from unexamined RCEs, while technology center 2800 (semiconductors, electrical and optical systems and components) remain unaffected. This RCE backlog can result in a delay of approximately three years for some art units. Possible solutions to the RCE problem would create a two track examiner specialization program, one track focusing on drafting office actions, and a second track focusing on finding relevant prior art. Another possible solution would be create a new type of request to reopen prosecution after final to allow applicants to enter new narrowing amendments or add new declarations without adding new arguments. A final solution may be to place the RCE back in the examiner’s normal docket and not the examiner’s special new docket.

Keywords: patent examination, examiner, RCE, continuation, patent application, Intellectual property, patent, patent law, patent statistics, patent prosecution, United States Patent and Trademark Office, USPTO, PTO, patentability

JEL Classification: K11

Suggested Citation

Tu, Shine (Sean), Understanding the Backlog Problems Associated with Requests for Continued Examination Practice (August 8, 2015). Duke Law & Technology Review, Vol. 13, No. 1, p. 216, 2015, WVU Law Research Paper No. 2015-10, Available at SSRN: https://ssrn.com/abstract=2656233

Shine (Sean) Tu (Contact Author)

West Virginia University College of Law ( email )

101 Law School Drive
Morgantown, WV West Virginia 26506
United States

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