Raising fees is not the way to reduce a growing backlog of requests for continued examination (RCEs), several patent attorneys told the Patent and Trademark Office (PTO) Wednesday.

Rather than punishing patent applicants for filing RCEs, the PTO needs to recognize that the requests are a part of the overall patent process and grant them a higher priority. As it is now, drugmakers and other patent filers can wait years for their RCEs to be handled, Courtenay Brinckerhoff, a patent attorney with Foley & Lardner, said at a PTO roundtable on the subject.

One of the agency's top priorities is cutting through the logjam of new patent applications, Acting Director Teresa Rea said as she opened the roundtable. The agency is doing that, having reduced the stack 18 percent since December 2010 when nearly 722,000 applications were waiting to be examined. Despite a 5 percent increase in the number of new applications being filed each year, the pile is now about 593,000 applications high. (See BioWorld Today, Aug. 24, 2012, and March 12, 2013.)

That progress has come at the expense of RCEs, which have seen a 115 percent increase in the same time period. Nearly 112,000 RCE applications were awaiting agency action in February, compared with about 52,000 in December 2010. That's because of an increased filing of RCEs, which leads to longer wait times for hearings.

The RCE logjam is a "big concern" for the PTO, Rea said, and the agency is taking several steps to address it, including providing more training for patent examiners and allowing more time for interviews. The PTO is trying to make RCEs unnecessary, she added. That's a goal industry could support.

But the PTO's current lack of priority for RCEs, coupled with a new fee schedule, had patent attorneys questioning whether the agency really understands the problem. It recently raised the RCE fee to $1 ,200 for the first filing and $1 ,700 for subsequent filings. Before, it was a flat $930 fee. Kenneth Fagin, of KMF Patent Services, called the increase premature since it came about while the PTO was still conducting a series of roundtables and gathering comments on the subject.

Given the tiered structure of the new fees, it seems as if the agency assumes RCE applicants are abusing the system and is using the increased filing fee to punish them, Fagin said. But "RCEs are not applicants' voluntary choice," he noted. In many cases, they have no alternative, especially when examiners look at claims in a vacuum, fail to read the entire application before making a decision and then fail to respond appropriately so the decision can be appealed.

Vanessa Pierce Rollins, of the Intellectual Property Owners Association, agreed that there are legitimate reasons to file an RCE. As for the increased fees, patent applicants shouldn't have to pay more if the PTO isn't giving them any more priority, she added.

A PTO review of RCEs showed the value in the process. In more than a third of the RCEs reviewed, the patent application was either reopened or allowed. In many of the cases, the original denial had been a close call.

The review also found that patent applications with 20 or more claims were more likely to end up with RCEs than those with fewer claims, showing that complexity can be a leading factor in RCEs.

While RCEs can prove valuable, the delay in reviewing them creates inefficiencies that interrupt patent prosecution midstream, Brinckerhoff said. After months or years of delay, previous nuances and understandings are forgotten, undermining the value of examiner interviews, she pointed out.

SEC OKs Use of Social Media

It's OK for public companies to get social when disclosing key information to shareholders, the SEC has decided, as long as they don't play favorites.

That means companies must first tell their investors which social media they'll use to disseminate the information required under Regulation Fair Disclosure (FD).

In a report issued this week, the SEC confirmed that Regulation FD applies to social media and other emerging means of communication the same way it applies to company websites. But the report cautioned companies against making selective disclosures through social media channels, as the regulation requires the information to be distributed broadly and nonexclusively.

"One set of shareholders should not be able to get a jump on other shareholders just because the company is selectively disclosing important information," said George Canellos, acting director of the SEC's Division of Enforcement. "Most social media are perfectly suitable methods for communicating with investors, but not if the access is restricted or if investors don't know that's where they need to turn to get the latest news."