Is It Time For a New Patent Exam System?

The U.S. Patent and Trademark Office (USPTO) should consider revamping its patent examination system, according to a new white paper authored by two members of the Intellectual Property Owners Association (IPO) U.S. Patent Office Practice Committee.
William F. Smith and Joseph Mallon argue that the current scheme has run its course and should be replaced with a new patent examination system, which they dub “Compact Prosecution 2.0,” which focuses on eliminating “dead zones” that bottleneck the process, namely final rejections and the manner in which requests for continued examination (RCEs) are docketed.
As explained by the authors, “The hallmark of Compact Prosecution 2.0 is, once a patent application is initially examined, the examination process continues without artificial stops until the case is allowed, appealed or abandoned, i.e., no dead zones. By keeping the case under constant consideration, it is believed that the overall efficiency of patent prosecution will be significantly enhanced.
Once the dead zones are eliminated, “the issues will be more quickly narrowed and focused so that final resolution of the patentability issues will be more efficiently and effectively concluded which will result in increased capacity in the Examining Corps to reduce the backlog of unexamined patent applications,” they contend.
The proposal includes the following specific changes to the current examination process:
– Eliminating final rejections and creating an initial examination period that allows for two office actions on the merits with amendment and/or presentation of evidence permitted after each office action as a matter of right.
– If necessary, a third office action will be issued. However, any response requires approval and the payment of an RCE fee.
– The RCE fee will provide two additional office actions with amendment and/or presentation of evidence permitted after each office action as a matter of right.
– Interviews after the third office action in the initial examination and after initial office action in each RCE are encouraged
– Applicant may appeal to PTAB after second rejection under 35 U.S.C. § 134(a)
– Applicant would also have the option of attending the appeals conference
– Applicants may request mediation after receiving the Examiner’s Answer
The white paper also includes proposals to revise examiner productivity metrics and docket management systems with the goal of encouraging examiner to complete the examination process swiftly.

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