When does an RCE matter?
RCE stands for Request for Continued Examination. To file an RCE or not to file – this is a question that often arises in the context of responding to a final Office Action (FOA) in a utility patent application. An RCE would not be involved in design patent applications or in responding to non-final Office Actions.
The reason why an RCE matters in a final Office Action is because, without it, the patent examiner may disregard your after-final response. Unlike a response to a non-final Office Action where your claim amendments and arguments must be considered, a patent examiner may choose not to enter your claim amendments in a FOA response on the grounds that they raise new issues or warrant further searching of the prior art.
When a final Office Action indicates no allowable subject matter and contains substantive claim rejections based on the prior art or subject matter eligibility, you are taking a big gamble to file an after-final response without an RCE.
What could happen if you do not file an RCE?
Negative consequences of filing an after-final response without an RCE include additional costs in the form of attorney’s fees and USPTO extensions of time.
At our firm, we do not charge any additional attorney’s fees for including an RCE in a response to a final Office Action. However, we do charge a flat rate for filing a separate RCE if and when an after-final response is rejected by the patent examiner. We believe our flat rate for filing a separate RCE is warranted when we have to docket additional deadlines, report the Advisory Action, gather instructions from the client, file the RCE and report the same.
In addition, the applicant risks additional costs in the form of USPTO extension fees. When an after-final response fails to place the application in condition for allowance, an Advisory Action will be issued. The problem, however, is that the deadline for filing a proper response with an RCE is counted not from the date of Advisory Action, but from the date of the final Office Action. Therefore, it is likely that extension fees will be required when the separate RCE is subsequently filed.
When should an RCE be filed?
If you are submitting claim amendments to overcome rejections based on the prior art, then it would be advisable to file an RCE. Rarely will patent examiners want to review substantive claim amendments or search for more prior art when considering an after-final response.
If you are submitting only arguments without any claim amendments, be careful. Filing an RCE with an argument-only response will not guarantee that the next action will be non-final. You may receive a “first action final” because your claims are directed to the same invention and all claims could have been rejected if they had been entered prior to filing the RCE [see MPEP 706.07(b)].
When should you file without an RCE?
There may be appropriate times to omit an RCE when responding to a final Office Action. One common example is when the examiners themselves indicate that they would be receptive to an after-final response. Another instance, although more rare, is when the finality of an Office Action is being challenged.
No RCE after favorable Examiner Interview
We recommend talking to patent examiners, especially if a final Office Action has been issued. We can learn about what the examiner is thinking and, in most cases, gain helpful insight on what types of claim amendments would be more successful than others. For these reasons, we generally recommend conducting Examiner Interviews.
During an Examiner Interview, we can also find out if the examiner would be receptive to an after-final response accompanied by an AFCP request. If so, then it would make sense to respond to the final Office Action without an RCE.
No RCE when final Office Action should be non-final
On rare occasions, a final Office Action may be improper. For example, the finality of an Office Action may be incorrect if the examiner introduces a new ground of rejection that is not necessitated by the claim amendments of the applicant’s prior response or by a recently filed IDS [see MPEP 706.07(a)].
No RCE when filing appeal
If the outstanding final Office Action is not the first final action (e.g., second or third final Office Action), there may not be any further claim amendments or new arguments to make. If an appeal is the best option to move the case forward, then obviously an RCE would not be required.
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