Some Comments On RCEs, Submissions, And RCE Strategy

July 23, 2008

in Examples of Responses,Prosecution Strategy

RCE Basics

A Request for Continued Examination (RCE) is a request to continue prosecution of an application.  Essentially, RCE practice can be thought of as a mechanism to buy another full examination of an application without having to refile it. An application in which an RCE is filed stays with the same Examiner and keeps the same serial number. RCEs are available for utility and plant applications, but not for design or provisional applications. RCE practice is governed by 37 CFR 1.114.

The Rules Concerning RCE Practice

37 CFR 1.114 sets forth three requirements/conditions for a proper RCE.

  1. Prosecution of the application must be closed.  The prosecution of an application is closed when: a final Office action; a Notice of Allowance; or a Quayle Action has been issued.
  2. A “submission” must accompany the RCE.
  3. The requisite government fee(s) must accompany the RCE.

A “submission” as used in 37 CFR 1.114 includes:

  1. an information disclosure statement (IDS);
  2. an amendment to a disclosure (i.e., the specification, claims, or drawings);
  3. new patentability arguments; or
  4. new evidence in support of patentability.

See MPEP 706.07(h)(II).

Some Important Points About RCE Submissions

1.    When any reply to an Office action is outstanding, a submission must meet the requirements of 37 CFR 1.111.  That is, the reply must be “fully responsive” to the last outstanding Office action.  A submission that is not fully responsive renders an RCE deficient and thus improper.

2.    Not every one of the examples set forth in 37 CFR 1.114 will constitute a submission in every circumstance.   Rather, the adequacy of any submission depends on the circumstances in which the RCE is filed.

An IDS filed with an RCE in an application that has been allowed satisfies the submission requirement, since there is no requirement to be fully responsive to any Office action.  That same IDS, however, when filed with an RCE after a final Office action, will not satisfy the submission requirement since it cannot be fully responsive to any Office action.

3.    There is a Pseudo Safe Harbor for Some Submissions that are Not Fully Responsive.
RCEs filed with submissions that are not fully responsive to a last outstanding Office action may sometimes be salvaged, depending on whether the submission was a bona fide attempt to respond to the Office action.

  • If the submission is deemed a bona fide attempt to provide a complete reply, the Applicant will be advised of the deficiency and given a new shortened statutory period of one month or thirty days (whichever is longer) to complete the reply.
  • If the submission is not deemed a bona fide attempt to provide a complete reply, the RCE will not toll the period for reply and the application will go abandoned after the expiration of the statutory period for reply.

See MPEP 706.07(h)(VI).

4.    A Reply/Request for Reconsideration after a final Office action may satisfy the submission requirement, even when the Reply/Request has been entered and an advisory action indicates that the arguments are not found persuasive.  The fact that the previously submitted arguments were not found persuasive does not preclude them as a submission under 37 CFR 1.114, provided that such arguments are fully responsive.  Consideration of whether any submission is fully responsive to the last outstanding Office action is done without factoring in the “final” status of such outstanding Office action. An Applicant risks a final first Office action, however, so further action would only be prudent.

5.    An appeal brief or reply brief never satisfies the submission requirement.  An RCE that contains a statement that incorporates by reference the arguments in a previously filed appeal brief or reply brief may constitute a submission, however. See MPEP  706.07(h).

6.    An improper RCE in an application under appeal may result in an abandonment or an unwanted allowance. The USPTO treats the filing of an RCE in a case under appeal as a withdrawal of the appeal by the applicant, regardless of whether the RCE includes the appropriate fee or a submission.  Consequently, when an RCE is filed without the appropriate fee or a submission, the application will either be allowed or abandoned, depending on the status of the claims.  If there is at least one allowed claim, the application will pass to issue with the allowed claim(s).  Conversely, if there are no allowed claims, the application will be considered abandoned.   See MPEP  1215.01.

Coming soon – strategic uses of RCEs and submissions

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© 2008, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney

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