Examples Of Strategic Uses Of Requests For Continued Examination (RCEs)

February 17, 2009

in Practice Suggestions,Prosecution Strategy,Useful Information

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.

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© 2009, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney

{ 3 comments… read them below or add one }

Tom February 18, 2009 at 6:53 pm

Why would you advise a client that you will pay the Issue Fee before you receive the funds from the client? I invoice the client and tell them I will pay the fee as soon as I receive the funds. My authorization to pay the fee is receipt of the funds from the client. The default is that the client, by the choice not to pay the fee, is deciding not to proceed. It is rare that the deadline ever approaches without me having the fee in hand. I tell my clients that I am their lawyer, not their bank.

Jim Berry March 8, 2009 at 3:43 am

Hi Mike,

I filed an IDS using a “0” in place of the “D” seen before a design patent number (e.g., used 0887,998 instead of D887,998). In the IDS, I used the “S” kind code to identify it as a design patent and the date and inventor name are correct. The examiner issed the first office action and refused to consider the reference because of the missing “D”. The patent number is correct and the “S” makes it clear that it is a design patent. MPEP 609.04(b)(VI.) allows additional time to correct inadvertently omitted info. Do you know of some way I can avoid paying the $180 after first Office Action fee?

mike March 9, 2009 at 12:53 pm

Dear Tom,

Thank you for your comment. To answer your questions in order:

1. Perhaps they are an institutional, well-paying client with many applications in active prosecution in one’s office.
2. Remember – the paragraph I offer is just an example. One could just as easily say that they will not pay the Issue fee without instructions and payment. As always, that is within the practitioner’s discretion.

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