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…
Category: Prosecution Strategy
An Applicant Knows More About Their Invention Than An Examiner – USPTO Director Jon Dudas
The USPTO website has a new story about the inclusion of USPTO Director Jon Dudas in Managing Intellectual Property Magazine’s 2008 “Top 50 Most Influential People in IP.” Apart from the merits of the story (forgive me, but I think it is self-evident that such a list would necessarily include the Director of the USPTO),…
A Discussion Of Strategies To Address Successive Non-Final Office Actions That Are Not Advancing Prosecution
In an earlier post, I discussed the Office’s policy of compact prosecution and how that policy affects patent prosecution in the USPTO. Under that policy, second Office actions are usually made final, except in limited circumstances. Consequently, except for an allowance or an indication of allowable subject matter, a response that triggers a non-final Office…
Appealing Non-Final Rejections In Continuing Applications
A common prosecution strategy when an Office action indicates allowed claims or allowable subject matter is to cancel the rejected subject matter and continue prosecuting that canceled subject matter in a continuing application. This strategy, of course, results in the relatively rapid issuance of a patent. An interesting aspect of this strategy is that some…
How To Identify Support For A Claim Amendment And When To Do So
This post discusses strategic considerations concerning identifications of support for claim amendments. New Matter is Prohibited Section 706.03(o) of the Manual of Patent Examining Procedure (MPEP) addresses rejections based on new matter (matter not supported by the disclosure at the time of filing). This section of the MPEP, citing 35 U.S.C. § 132, articulates the…