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Request for Continued Examination (RCE): An Overview
One of the most difficult decisions any patent applicant, whether they are a small business or an independent inventor, must make is whether to give up on their application. Even the biggest firms have limited resources, so wasting money by throwing good money after bad is not a successful tactic.
In comparison to the expense and time involved in filing an appeal with the Patent Trial and Appeal Board at the United States Patent and Trademark Office, filing a Request for Continued Examination (RCE) might be a very appealing choice when you do not want to give up on a patent application.
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Request for Continued Examination (RCE)
The patent application process is not predictable. As new obstacles appear and patent practitioners are required to make crucial prosecution choices, the path to issuance might be difficult. These choices are frequently made in response to a final office action from an examiner. A patent applicant has a few alternatives after receiving a “final determination” (also known as a Final Office Action) from the US Patent Office. One choice is to submit an RCE (Request for Continued Examination).
After a USPTO patent examiner makes a final denial, the Request for Continued Examination (RCE) process is a quick way to keep a patent pending. The final denial is effectively withdrawn upon payment of the regular filing fee and submission of a preliminary amendment, and the updated claims are assessed as though they were being made for the first time in a newly filed application. Therefore, if there is a further rejection, it won’t be the final one.
An RCE is essentially a request made in writing to the Patent Office for further handling of a patent application. In order for the Patent Office to continue processing the application, the applicant typically needs to provide more justifications, modifications, or amendments to a claim or claims, or some other justification. Officially, the applicant is hopeful that further examination will result in a revision or adjustment to the Final Office Action. For instance, the Patent Examiner is required to give justifications where the Final Action is the legal equivalent of a denial.
Depending on the circumstances, an RCE might be advised if it appears that the Patent Examiner made a legal mistake or if a thorough or in-depth review of certain prior art might lead to a modification of the Final Office Action.
Criteria for Filing an RCE
Only after the issuing of a Final Office Action—one of the following: a final rejection of a patent application, a Notice of Allowance, or an action that otherwise ends prosecution in the application—may one submits a request for an RCE. Within four months of the Final Office Action, an RCE must be submitted (although extensions can be obtained). The following must be included in the written RCE request:
- The proper request form;
- The payment of the proper fees;
- An information disclosure statement; and
- New justifications or supporting information for the patentability of the written description, claims, or drawings.
The patent application will be continued after being correctly filed, and the RCE will be taken into consideration. The Patent Office will then retract the finality of any Office Action.
Filing an RCE has a number of benefits. First off, while an RCE is frequently required in the end, it is typically speedier and less expensive than the alternatives. One choice, for instance, is to merely submit a response to the Final Office Action. Frequently, such a choice is insufficient to advance the patent application to the point where it can be approved. So eventually an RCE is needed.
Second, the “issue” is really just that the Patent Examiner needs more time, especially with complex patent applications. Patent examiners are allocated a set amount of time to accomplish their duties, just like all other employees. Simply put, submitting an RCE “resets the clock,” allowing the Patent Examiner an additional “block of time” to finish the investigation.
Third, an RCE is a technique for keeping the patent application “alive,” which is crucial since it prevents the patenting process from having to start again “from scratch.” Other applicants could desire the patent application to be classified as “pending” for as long as feasible for strategic reasons. One way to do this is by submitting an RCE.
Fourth, to reopen prosecution following the issuance of a final office action by a patent examiner. A patent applicant may reply directly to a final office action in an effort to overturn a patent examiner’s rejections, but there are restrictions on the kinds and volume of revisions that can be made. Responses to final office actions may not contain substantial but frequently required arguments or adjustments, including changes to the claims of the patent, lengthy arguments, or other alterations that could necessitate additional prior art searches by the assigned patent examiner.
Exceptions to RCE
The following are the exception of RCE:
- A provisional application;
- An application for a utility or plant patent filed under 35 U.S.C. 111(a) before June 8, 1995;
- An international application filed under 35 U.S.C. 363 before June 8, 1995, or an international application that does not comply with 35 U.S.C. 371;
- An application for a design patent;
- An international design application; or
- A patent under re-examination.
When is a Request for Continued Examination unnecessary?
RCEs are not necessary for all Final Office Actions. If the examiner suggested that a particular claim would be allowed, the applicant needs just submit an after-final response incorporating the suggested claim language. Additionally, if the applicant is merely thinking about restricting claim revisions, an RCE might not be necessary. One possibility, for instance, is to submit such an after-final response along with an After Final Consideration Pilot (AFCP) request. The Examiner will decide whether to consider such an after-final response. The question is whether the claim modifications will require the examiner to spend more time than allocated on further patent searches. The Examiner will issue an Advisory Action if they decide not to enter an after-final response.
Additionally, if an applicant has already filed one or more RCEs and has run out of options with a specific examiner, submitting a patent appeal may be a better option than doing so again.
When to file RCE?
When an applicant wants to make additional claim revisions and/or arguments after receiving a Final Office Action, an RCE makes sense. An RCE would be appropriate, in particular, if the intended claim changes would force the examiner to conduct a more thorough search of the previous art (or at least make the examiner feel that way).
It can occasionally be helpful to conduct an examiner interview before submitting a response to ascertain whether an RCE is required.
When is an RCE required to file IDS?
The date the applicant first became aware of the prior art is crucial information to ascertain if a Final Office Action is still pending and an Information Disclosure Statement needs to be submitted. The applicant can avoid an RCE and only pay a small USPTO fee if the earliest date of awareness is less than three months after the IDS is filed.
If the applicant’s first awareness of the new prior art occurred more than three months before the IDS’s due date, the applicant must first file an RCE before submitting the IDS.
Does the number of RCEs that can be filed have a limit?
No, an applicant may not file a maximum number of RCEs. It might be more cost-effective for an applicant to appeal than to submit another RCE at a given point in the application where development has stopped.
RCE Filed: What Next?
An examiner may approve an application in response to a combined RCE and Office Action response. If not, the examiner would issue a further, usually non-final Office Action, particularly if the applicant added fresh arguments or additional claim revisions. If you’re keeping track, this would be the application’s second non-final Office Action, which would not be unusual. This second non-final action would provide the applicant the chance to respond. The candidate may occasionally have to choose between giving up or keeping up the fight.
What alternatives exist to submitting the Request for Continued Examination?
If you want to save your patent application from being abandoned, you can file a continuation patent application instead of the RCE or appeal the decision to the Patent and Trademark Appeal Board.
Being aggressive while pursuing patents pays off. Typically, an RCE should only be attempted when revising claims to include new information from the specification (otherwise, the search fee has already been paid). The goal of every patent prosecution is expanded protection, which a strong appeal will likely achieve.
Your patent application will be examined after those who file continuation patent applications. You must wait until the patent office clears its backlog in order for your patent application to be reviewed once more. The grant of your patent will be delayed by at least one or two years if you file an appeal.
Now, submit an appeal or a continuation application if you want to put off paying the charges associated with your patent application.
You are able to submit an After Final Consideration Pilot (AFCP) 2.0 following receipt of the final office action. If the AFCP 2.0 is appropriate, you would need to ask the examiner during an interview. The AFCP 2.0 is only appropriate if the examiner thinks your claims are almost certainly going to be accepted. If not, you must submit a Request for Continued Examination.
In summary, after patent prosecution (or examination) on a patent application has concluded, a patent applicant may request continued examination (also known as RCE) to continue the examination of their patent application. For instance, patent prosecution is complete once a final office action is received. The prosecution of the patent application is reopened and the examination is reopened, upon the filing of an RCE. The patent application will be abandoned if the RCE is not filed.
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