What is a Request for Continued Examination (RCE)?
We’ve discussed how a patent Final Office Action is not really “final” in the sense that the applicant will still have opportunities to file further responses. Since a Final Office Action limits the available options for a response, an applicant may have to resort to a Request for Continued Examination (RCE) to submit further claim amendments and arguments. So an RCE comes into play when dealing with a Final Office Action.
When is a Request for Continued Examination unnecessary?
Not all Final Office Actions require an RCE. If the examiner has indicated that certain claims would be allowable, then the applicant may simply file an after-final response taking the allowable subject matter. An RCE might also be unnecessary if the applicant is considering only narrowing claim amendments. For example, filing such an after-final response with an AFCP request may be an option. It will be up to the Examiner on whether they will entertain such an after-final response. The issue is whether the claim amendments will cause the examiner to spend more than the allotted time for further patent searching. If the Examiner chooses not to enter an after-final response, they will issue an Advisory Action.
Also, if an applicant has previously filed one or more RCE’s and has reached the end of the road with a particular examiner, then a patent appeal may make more sense than filing another RCE.
When should an RCE be filed?
An RCE makes sense when an applicant has received a Final Office Action and desires to make further claim amendments and/or arguments. In particular, if the contemplated claim amendments would require the examiner to perform a more extensive search of the prior art (or at least cause the examiner to feel that way), then an RCE would be suitable.
Sometimes, conducting an examiner interview prior to filing a response may be useful in determining whether an RCE is warranted.
What are advantages of filing an RCE?
An applicant can always take their chances in responding to a Final Office Action without filing an RCE. However, the risk is that such an after-final response may not place the application in condition for allowance. Unless the applicant is planning on making simple claim amendments to take allowable subject matter, an after-final response containing more substantial claim amendments and/or substantive arguments will likely lead to an Advisory Action stating that an RCE should be filed.
So, why not file an after-final response first and wait to see if an RCE will later be required? The problem with this approach is that it will likely necessitate extension fees if and when the examiner requires an RCE. The reason is because the date of the Final Office Action (and not the date of the Advisory Action) is the reference point for any further responses to be filed after an Advisory Action. So if the Examiner issues an Advisory Action requiring an RCE, and you file the RCE by the 4-month date from the date of the Final Office Action, for example – you will need to pay a USPTO extension fee for a 1-month extension of time.
When is an RCE required to file an IDS?
If a Final Office Action is outstanding and an Information Disclosure Statement must be filed, then it is critical to determine the date the applicant first became aware of the prior art (e.g., Office Action date in a counterpart foreign application). If that earliest date of awareness is less than 3 months from the date the IDS is filed, then the applicant can avoid an RCE and simply pay a nominal USPTO fee (large/small: $260/$130).
If the date the applicant first became aware of the new prior art was more than 3 months from the date of the IDS to be filed, then the applicant must file an RCE in order to submit the IDS.
Resetting the Examiner’s Counter
Due to high caseload, a patent examiner is given a limited allocation of time to review each application and search the relevant prior art. If an applicant’s response to a non-final Office Action doesn’t convince the examiner to allow the case, then the examiner is not getting any further credit by issuing a second non-final action. The system incentives patent examiners to issue final actions, and an RCE resets the counter so that the examiner gets more time to review claim amendments and search the prior art accordingly.
How is an RCE filed?
The request itself is a fairly straightforward transmittal form. The RCE may filed with a response or subsequent to the filing of an after-final response. In most cases, you will likely want to file an Office Action response with further claim amendments and/or arguments in conjunction with the RCE.
What is the cost of an RCE?
As of the date of this post, the small entity USPTO fee is $600 for the first RCE and $850 for the second and subsequent requests.
Is there a limit on the number of RCE’s that can be filed?
No, there is no maximum number of RCE’s an applicant may file. At a certain point in an application where progress has ceased, it may make more financial sense for an applicant to appeal than to file another RCE.
What happens after an RCE is filed?
In response to a combined RCE and Office Action response, an examiner may allow an application. If not, the examiner will issue another Office Action which would typically be non-final, especially if the applicant introduced additional claim amendments and/or new arguments. If you’re keeping count, this would be the second non-final Office Action in the prosecution of the application which would not be uncommon. The applicant would have the opportunity respond to this second non-final action. At some, the applicant may have to make the difficult decision of whether to abandon or continue fighting.
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