Make Your RCE a Priority

March 08, 2015

Requests for Continued Examination (RCE) are used by patent applicants to continue prosecution of a patent after an examiner issues a final rejection. The hope is that another go around with the examiner will lead to the application being granted. In the past, we could expect an answer from the examiner within two months. However, with a backlog at the patent office of more than 90,000 applications that have not been examined since an RCE was filed, those days are long gone. In fact, some of these RCEs have been languishing in the United States Patent and Trademark Office (USPTO) for three years. That delay is a consequence of a change in how RCEs are prioritized by examiners.


Prior to November 15, 2009, an application with an RCE was placed on an examiner’s “amended” docket. The examiner was expected to act on the application within two months. Under the new docketing procedures, an application with an RCE is placed on the examiner’s “special new” docket along with continuation and divisional applications.  There is no deadline for the examiner to issue an Office Action on cases on the special new docket. The examiner need only issue an Office Action on at least one item from this docket each month. So, if there are many items on an examiner’s special new docket, and your application is the 50th item, it may take 50 months before you see an Office Action after filing your RCE.


Fortunately, there is a way around this problem. As of December 2012, the USPTO now makes available the Track One option for prioritized examination for patents that have had or will have an RCE filed. Track One is part of the USPTO’s Prioritized Examination Program. Prior to the ability to seek prioritized examination on RCE applications there was little option to expedite the handling of these applications. Prioritized Examination can only be requested once for an application under an RCE. Of course speeding up the process comes at a price—$2,000 filing fee for small entities, $4,000 for large entities and $1,000 for micro entities.


The U.S. Patent and Trademark Office Prioritized Examination Program generally allows applicants to reach a final disposition for their patent application within about 12 months. Track One gives a patent application special status and has the distinct advantage of providing faster examination without the necessity to perform an extensive preexamination search. While it is fairly well known that the Track One exists, many applicants are not aware that it can be applied to utility or plant applications on which an RCE has been filed.


The patent office has acknowledged the RCE backlog problem and that changing the docketing policy was a bad decision. Earlier this year, the office accepted comments from the public and held several events aimed at fostering open conversations about RCEs in patent practice and ways to minimize their use.


If you have a patent application pending that is expected to have an RCE filed in the near future or that has had a RCE filed earlier, it may be worth your while to seek further information on the Track One Prioritized Examination Program for applications in which a RCE has been filed.