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…
Category: Useful Information
Requesting Withdrawal Of The Finality Of An Office Action
This post discusses requests to withdraw finality. Under the USPTO’s policy of compact prosecution discussed here, a second office action may properly be made final under most circumstances. The circumstances are set forth in §706.07(a) of the Manual of Patent Examining Procedure (MPEP), entitled Final Rejection, When Proper on Second Action, which states: Under present…
A Few Reasons To Consider Including A Listing Of Claims In Every Response To An Office Action
Listings of claims are required in most, but not all responses to Office actions. This post discusses when they are required and why it may be prudent to include them even when they are not. The Rules The manner of making amendments in a patent application is governed by 37 CFR. 1.121 entitled “Manner of…
The “Art” Of Patent Prosecution Or Don’t Be A Bull In A China Shop
In my opinion, quality patent prosecution can often be as challenging as quality patent application drafting, which is one of the more challenging tasks in the legal profession. The challenge in patent prosecution is not in obtaining allowed claims, but rather in obtaining the broadest claims that have the most value. That is, to convince…