706.07(h) Request for Continued Examination (RCE) Practice
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(b) The Director shall prescribe regulations to provide for the continued examination of applications for patent at the request of the applicant. The Director may establish appropriate fees for such continued examination and shall provide a 50 percent reduction in such fees for small entities that qualify for reduced fees under section 41(h)(1).
(a) If prosecution in an application is closed, an applicant may request continued examination of the application by filing a submission and the fee set forth in § 1.17(e) prior to the earliest of:
(1) Payment of the issue fee, unless a petition under § 1.313 is granted;
(2) Abandonment of the application; or
(3) The filing of a notice of appeal to the U.S. Court of Appeals for the Federal Circuit under 35 U.S.C. 141, or the commencement of a civil action under 35 U.S.C. 145 or 146, unless the appeal or civil action is terminated.
(b) Prosecution in an application is closed as used in this section means that the application is under appeal, or that the last Office action is a final action (§ 1.113), a notice of allowance (§ 1.311), or an action that otherwise closes prosecution in the application.
(c) A submission as used in this section includes, but is not limited to, an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. If reply to an Office action under 35 U.S.C. 132 is outstanding, the submission must meet the reply requirements of § 1.111.
(d) If an applicant timely files a submission and fee set forth in § 1.17(e), the Office will withdraw the finality of any Office action and the submission will be entered and considered. If an applicant files a request for continued examination under this section after appeal, but prior to a decision on the appeal, it will be treated as a request to withdraw the appeal and to reopen prosecution of the application before the examiner. An appeal brief (§ 41.37 of this title) or a reply brief (§ 41.41 of this title), or related papers, will not be considered a submission under this section.
(e) The provisions of this section do not apply to:
(1) A provisional application;
(2) An application for a utility or plant patent filed under 35 U.S.C. 111(a) before June 8, 1995;
(3) 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;
(4) An application for a design patent;
(5) An international design application; or
(6) A patent under reexamination.
Actions in which the prosecution will be considered closed and a request for continued examination (37 C.F.R. 1.114) may be proper include when:
- an Office action is a final rejection
- a Notice of Allowance has issued
- an Office action under Ex Parte Quayle (this is a legal proceeding, the details of which are not discussed in the MPEP) has occurred
- an application is under appeal by the Patent Trial and Appeal Board
The procedure of 37 C.F.R. 1.114 (RCE) is not available in an application after:
- it has been abandoned
- the issue fee has been paid
- the applicant has filed a Notice of Appeal to the Federal Circuit (unless the appeal is terminated and the application still remains pending afterward)
The provisions of 37 C.F.R. 1.114 do not apply to the following types of patents:
- design patent applications
- provisional applications
- applications filed before June 8, 1995
- international applications filed before June 8, 1995
- reexamination patents
An applicant may not obtain an examination of a different or non-elected invention (i.e., divisional) in a request for a continued examination under 37 C.F.R. 1.114
A request for continuing examination must include a:
- fee
- submission advancing the application (it must be a bona fide attempt to advance the application if a reply to an Office action is outstanding)
- if it is not a bona fide attempt to advance the application, the RCE will be treated as improper and it will not toll the period for reply to the final Office action
Bona fide attempts at advancing the application include:
- new arguments in support of patentability
- new evidence in support of patentability
- an IDS
- an amendment of the drawings
- an amendment of the claims
- it does not include an appeal brief or a reply brief (or related papers)
- however, it may consist of the arguments in a previously filed appeal brief or reply brief or a statement that incorporates by reference the argument in a previously filed appeal brief or reply brief
At a glance:
What happens when an RCE is filed at a particular time during prosecution?
| Time to file RCE | What happens? |
After the filing of a Notice of Appeal, but prior to a decision on the appeal. |
Appeal will be withdrawn and the prosecution of the application re-opened. |
After the decision by the Board of Appeals, but before the filing of a Notice to the Court of Appeals for the Federal Circuit or civil action in Federal District court. |
The rejection will be made final or the action withdrawn and the submission in the RCE will be considered by the PTO. |
After a Notice of Allowance has been sent. |
Prosecution will be re-opened. |
After the Issue Fee has been paid. |
The application will issue into a patent. |
An amendment filed to the Office in reply to a final rejection must comply with either the provisions of 37 C.F.R. 1.114 or the provisions of 37 C.F.R. 1.116(b) and (c)
In those instances in which an applicant seeks to add new matter to the disclosure of an application, the procedure set forth in 37 C.F.R. 1.114 is not available, and the applicant must file a Continuation-In-Part application under 37 C.F.R. 1.53(b) containing such new matter
Details of 37 C.F.R. 1.114 --
An applicant in a utility application originally filed on or after June 8, 1995 and before May 29, 2000 may obtain further examination either by timely filing a request for continued examination (RCE), a proper submission and a requisite fee, or by timely filing a continued prosecution application (CPA)
An improper RCE will not toll the running of any time period set in the previous Office action for reply to avoid abandonment of the application
- the applicant may be able to send in other material for the application to be considered a proper RCE
- if a reply to an Office action is due, a submission meeting the requests of 37 C.F.R. 1.111 (reply by applicant or patent owner to a non-final Office action) must be timely received to continue examination of an application
Under the request for continuing examination procedure (RCE), a submission will be considered if the submission and the requisite fee is filed prior to the abandonment of the application
- RCE’s may not be filed for design applications
If an applicant files an RCE after the filing of a Notice of Appeal to the Patent Trial and Appeal Board (Board), but prior to a decision on the appeal, it will be treated as a request to withdraw the appeal and to reopen prosecution of the application before the examiner, regardless of whether the RCE is proper or improper.
- The Office will withdraw the appeal upon the filing of an RCE.
If an applicant files a CPA when it is inappropriate (such as in the case of a utility or plant application filed after May 29, 2000), the Office will automatically treat the improper CPA as an RCE
If an applicant files a CPA when it is inappropriate and they don’t want it treated as an RCE, they may file a petition under 1.53(e) to have the improper CPA converted to an application under 1.53(b)
If an applicant with a utility application filed before May 29, 2000 (but on or after June 8, 1995) files a request for continuing examination under 37 C.F.R. 1.114, the application being prosecuted is not an application filed on or after May 29, 2000 and is not entitled to the patent term adjustment provisions
If an applicant in a utility application filed before May 29, 2000 files a CPA after May 29, 2000, the application being prosecuted (now a CPA) is an application filed on or after May 29, 2000 and is entitled to the patent term adjustment provision
At a glance:
Differences between RCE’s and CPA’s.
|
RCE |
CPA |
Filed under - |
37 C.F.R. 1.114 |
37 C.F.R. 1.53(d) |
Not applicable to - |
Provisional, design, applications filed before June 8, 1995 or during reexamination |
Provisional, utility or plant applications filed on or after May 29, 2000 |
Time to file - |
Must be after prosecution is closed, but before it is paid |
May be filed before prosecution is closed |
Treatment - |
Continuing examination of same application |
Continuing application, but is technically a different application |
Patent term adjustments (PTA) - |
Not entitled |
Entitled to PTA that may have accumulated during CPA |
Mailing - |
Entitled to benefit of Certificate of Mailing |
Not entitled to benefit of Certificate of Mailing |
Abandonment of prior - |
No |
Yes |
Small entity - |
Automatically carries over |
Does not automatically carry over |
Submission - |
Must include a reply with a bona fide attempt to advance the application |
No need to reply with a bona fide attempt to advancing the application |
American Inventors Protection Act - |
If filed on or after Nov 29, 2000, not subject to 18 month publication provision |
If filed on or after Nov 29, 2000, will be subject to 18 month publication provision |
