February 17, 2009|
© 2009, Michael E. Kondoudis
This is the second part of a two-part discussion of RCEs and the submission requirement. In my earlier post here, I discussed legal principles about RCEs and some RCE strategy. This post presents and discusses some additional strategic uses for RCEs beyond reopening/continuing prosecution after a final Office action.
An RCE can be used to have art considered and made of record when the statement under 37 CFR § 1.97(e) is required but cannot properly be made.
Consider a circumstance where an Applicant seeks to have art considered by the Office (i) after a final Office action and (ii) more than three months after the art was cited in a corresponding foreign application. If the Examiner declines to consider the art (the Rules do not prohibit the Examiner from considering art at any time during prosecution), filing an RCE with an IDS will require the USPTO to consider the art as a matter of right.
In this circumstance, the Applicant may consider foregoing a Response After Final and file an RCE with two submissions, a fully responsive Response and an IDS.
Two Comments About RCEs and IDSs
1. Keep in mind that 37 CFR 1.97 specifies when an IDS shall be considered by the Office. Thus, compliance with this rule ensures consideration of submitted art as a matter of right. A failure to satisfy the requirements of this rule does not preclude the consideration of the cited art, just consideration as a matter of right.
2. The three-month window of 37 CFR 1.53(b) (an IDS will be considered if filed within three months after the filing date) does not apply to RCE applications. An IDS after an RCE will, however, be considered without a statement and fee so long as the IDS is filed before the first action after the RCE.
An RCE can be used to withdraw an appeal.
After a Notice of Appeal, an Applicant/Appellant sometimes (i) decides to amend claims or (ii) discovers new art that is material to patentabilty. In either of these situations, filing an RCE would withdraw the appeal and reopen prosecution so that the amendments or art can be made of record.
An RCE can be used to withdraw an allowed application from issue.
After a Notice of Allowance, but before payment of the Issue Fee, an Applicant begins to evaluate whether the claims are of adequate scope or whether additional claims are warranted. If there is a risk of the application issuing, an RCE will stop it. In this circumstance, filing an RCE with a submission that merely amends the Abstract to change as little as a single word can be used to buy the Applicant time to decide whether to permit the application to issue.
An RCE may also be used to avoid paying an Issue Fee but maintaining pendency when it is unclear whether an Applicant wants to pay an Issue Fee.
Here again, a submission that merely amends the Abstract to change as little as a single word can be used.
A Comment on Reporting Issue Fees
To avoid the latter situation illustrated above in which it is unclear whether the Applicant wants to pay the Issue Fee, one might consider a paragraph such as the following in a Notice of Allowance and Notice of Allowability reporting letter:
The Issue Fee and Publication Fee are due no later than January 1, 2009, and we will pay those fees on the due date unless we receive your instructions otherwise. In that regard, if you instruct us to file a request for continued examination (RCE), we must have your proposed amendment or other submission before the due date.
Such a paragraph makes clear that the fees will be paid in the absence of further instructions.
