-- Docket Management
RCEs will now be placed on an examiner's Special New docket, instead of their Amended docket as before.
The requirement that examiners work on their oldest cases first has always been there. The problem is that its enforcement has always been very arbitrary. Some TCs or art units are required to adhere to the rule, while others never have. Enforcing this requirement across the entire Office should ensure that tough applications are not put off.
The new RCE docketing procedure, I think, may well have a very significant impact on the prosecution of applications by attorneys.
Currently, an RCE will be placed on an examiner's Amended docket, requiring them to take action within 2 months.
The new provision treats RCE just like any other continuation or divisional application, placing them on the examiner's Special New docket. This means that there is no fixed deadline for preparing the next action. They will be, of course, subject to the requirement that the oldest new application be worked on every 2 bi-weeks, but that only requires the examiner to do one case from their Special New docket each month. For examiners with large dockets, those RCEs could definitely back up on their Special New docket.
For instance, I averaged about 5 RCEs filed in each quarter last FY. Under the new rules, I'm only required to work on 3 per quarter. You see where I'm going here; this provision could serve as a big disincentive to filing RCEs, because you're going to have to wait longer for your RCE to be examined (although with the backlog at the BPAI, appeal might be an even less attractive alternative).
The provision will certainly serve to address first action pendency, because it will reduce the number of applications on an examiner's Amended docket, thereby giving them more time to work on new applications. It's possible that some examiners may continue to work on their RCEs as they come in, since they're still getting counts for the first action (as they would for any continuation or divisional). The point is, they are no longer required to send out that first action after RCE within 2 months.
(USPTO Press release), (Proposal)
USPTO Joint Labor-Management Task Force Proposes Significant Changes to Examiner Count System
WASHINGTON —Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) David Kappos has unveiled a series of proposals to bring significant change to the examiner “count system” – the methodology for determining the time a patent examiner has to complete a patent examination and how much credit is given for each stage of an examination. The proposal was developed by a task force comprised of senior managers in the Patents organization and leadership of the Patent Office Professional Association (POPA), the union that represents patent examiners.(PatentlyO)
(Juat a patent examiner) (PatentlyO)
The count system serves multiple purposes. In an ideal world (yes, I am well aware that this one is far from ideal), it would encourage compact prosecution, in that examiners do not receive any credit for 2nd actions which are non-final (or any subsequent actions). It also serves as a guide for the amount of work an examiner has to do. Each examiner is required, on a per fiscal-quarter basis, to produce a number of counts. The goal varies depending on technology. In theory, simpler technologies require less time to search and write up (fewer 112 issues, for example). Additionally, the goal depends on an examiner's rank. GS-14 (primary examiners, with full signatory authority) are required to produce 35% more than a GS-12 (someone with a PhD who has been at the office a year, for example).
As an examiner, the count system is useful to me because I am acutely aware of how much work I need to do in order to keep my job (several consecutive quarters of not meeting your goal can lead to firing) and how much more I need to push myself in order to receive a bonus. Furthermore, the count system does force us to work on new cases, albeit probably not as many as applicants would like. I can look at my amended docket (cases due in the next 2 months) and see how many first actions I have coming up, and how many are allowable (or might be close, i.e. if attorney is willing to take what I consider to be allowable subject matter as opposed to argue for broader scope) and look at my list of rejected cases and try to guess which cases will go abandoned. Knowing that, I know how many new cases I have to work on.
Every round of examination is allotted two counts: a "new" count, and a "disposal" count. A request for RCE ends the current round, and begins the next round. An examiner gets a "new" count when he or she does a first non-final office action (per round) or a first-action allowance. An examiner gets a "disposal" count for an allowance, abandonment, examiner's answer, an RCE request, and I think a couple of other relatively rare things. An examiner gets no counts for finals, 2nd or subsequent non-finals (per round), advisory actions, or other tasks (312s, misc. communications, etc.).
If the sequence of the case is NF, FINAL, ADV, RCE, NF, FINAL, ALLOW, the examiner gets a "new" count for each of the two NFs, and gets a "disposal" for each of the RCE request and the allowance. The examiner gets no counts for any of the other actions. If the case sequence is NF, 2ND NF, FINAL, ADV, ALLOW, the examiner got counts for the first NF and the allowance. For a first action allowance, the examiner gets both a "new" and a "disposal" count, so the examiner gets 2 counts. This also holds true after RCE. That is, for the sequence NF, FINAL, RCE, ALLOW, the examiner got a new count for the NF, a disposal for the RCE, and both new and disposal counts for the allowance.
Based on the art unit and the examiner's GS level (GS-12 is the middle examining level; most examiners start at GS-7, GS-13 is partial signatory authority, GS-14 is a primary, and GS-15 is a SPE), each examiner has to do a certain number of counts each bi-week. The number of counts is based on the GS-12 expectancy, which is different for each art unit. If a GS-12 in a particular art unit is expected to complete a round of examination in 25 hours, then a GS-12 in that art unit is expected to turn in a count for every 12.5 hours that they work. Requirements for examiners at other grade levels are determined by multiplying that by particular factors (for example if a GS-12 has to do a count every 12.5 hours, then a GS-7 in that art unit has to do a count every approximately 18 hours).