The scandalously high RCE rate for FY2009 was to have been cured through “count” reform. Now, however, anecdotal complaints are being received from reliable senior practitioners who say that the situation is unchanged.

The PTO leadership now has the strongest empirical study team in place led by Professor Arti Rai, an empirical studies expert, who has assumed the top leadership position formerly occupied by Lois Boland as head of international patents.

Now is the time for an empirical study to see just whether or not the arbitrary practice that has been anecdotally reported is in fact representative of the practice or merely an aberration. A starting point would be to study the rate of refusals to enter amendments after final rejection (whether or not an RCE is filed).

With the PTO projecting only a two percent (2%) decrease year by year in RCE's in the wake of "count" reform, it is manifest that serious problems remain that must be investigated as a priority matter.

From a reliable senior practitioner: "I still have to file as many RCEs as ever. The biggest reason for the continued high filing of RCEs is the virtually total refusal of Examiners to consider any kind of amendment after final action. Even the incorporation of an existing dependent claim into the parent independent claim is refused entry on grounds it creates a new combination with other dependent claims that would require further consideration and search. Likewise, the elimination of one member of a Markush group is considered a change in scope that would require further consideration and search. Filing an RCE is often the only way to get any kind of amendment considered after a second office action even when the second office action cites new references and makes a totally new rejection based on the newly cited references because the the second action is still made final because the new grounds of rejection were ‘necessitated’ by the applicant's response to the first office action. And after you file the RCE to compel entry of the amendment, the next action is frequently a notice of allowance. Clients feel ripped off because they don't understand why they had to file an RCE (and usually pay for an expensive extension of time) to obtain consideration of an amendment that placed the case in condition for allowance. The PTO will never solve the RCE problem until they deal with this situation.”