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Request for Continued Examination (RCE) Questions and Answers

(Updated on 5/5/03; last reviewed on 7/18/02)


A1. What is a request for continued examination (RCE)?

Section 4403 of the “American Inventors Protection Act of 1999” amends 35 U.S.C. § 132 to provide, at the request of the applicant, for continued examination of an application for a fee (request for continued examination or RCE practice), without requiring the applicant to file a continuing application under 37 CFR 1.53(b) or a continued prosecution application (CPA) under 37 CFR 1.53(d).

To implement RCE practice, the Office has added 37 CFR 1.114 to provide a procedure under which an applicant may obtain continued examination of an application by filing a submission and paying a specified fee, even if the application is under a final rejection, appeal, or a notice of allowance.

For the Final Rule, see Request for Continued Examination Practice and Changes to Provisional Application Practice ; Final Rule, 65 FR 50092 (Aug. 16, 2000),  1238 Off. Gaz. Pat. Office 13 (Sept. 5, 2000).

For the Interim Rule, see Changes to Application Examination and Provisional Application Practice , Interim Rule, 65 FR 14865 (Mar. 20, 2000),  1233 Off. Gaz. Pat. Office 47 (Apr. 11, 2000).

A2. To what applications do the RCE provisions of 37 CFR 1.114 apply?

The provisions of 37 CFR 1.114 apply to utility or plant applications filed under 35 U.S.C. § 111(a) on or after June 8, 1995, or international applications filed under 35 U.S.C. § 363 on or after June 8, 1995. The request for continued examination provisions of 37 CFR 1.114 do not apply to: (1) a provisional application; (2) an application for a utility or plant patent filed under 35 U.S.C. § 111(a) before June 8, 1995; (3) an international application filed under 35 U.S.C. § 363 before June 8, 1995; (4) an application for a design patent; or (5) a patent under reexamination. See 37 CFR 1.114(e).

A3. When may an applicant file a request for continued examination (RCE) under 37 CFR 1.114? (Updated on 8/01/02)

An applicant may obtain continued examination of an application by filing a submission and the fee set forth in 37 CFR 1.17(e) prior to the earliest of: (1) the date a patent is granted (but after payment of the issue fee only if a petition under 37 CFR 1.313 is granted); (2) abandonment of the application; or (3) the date applicant seeks court review of a decision by the Board of Patent Appeals and Interferences (unless the court action is terminated). See 37 CFR 1.114(a). An applicant cannot request continued examination of an application until after the prosecution in the application is closed. See 37 CFR 1.114(a).

Note: 37 CFR 1.114 in the Final Rule requires that prosecution in an application be closed (i.e, the application is under appeal, or the last Office action is a final action, a notice of allowance, or an action that otherwise closes prosecution in the application such as an Office action under Ex parte Quayle , 1935 Comm'r Dec. 11 (1935)) before an applicant can request continued examination of the application. Thus, a RCE would not be acceptable if the last Office action was a non-final rejection.

A4. An applicant filed a RCE within 3 months from the mailing of a non-final Office action (i.e., the prosecution in the application is not closed). With the RCE, the applicant submitted an amendment responsive to the Office action in compliance with 37 CFR 1.111 and the proper fee. (a) Is the RCE proper? (b) If the RCE is improper, will the amendment be entered and considered by the examiner to avoid abandonment of the application?

(a) The answer would depend on the filing date of the RCE.

If the RCE was filed before August 16, 2000 , then the RCE would be proper because under the RCE Interim Rule, a RCE may be filed before the prosecution in an application is closed. See Changes to Application Examination and Provisional Application Practice , Interim Rule, 65 FR 14865 (Mar. 20, 2000),  1233 Off. Gaz. Pat. Office 47 (Apr. 11, 2000).

If the RCE, however, was filed on or after August 16, 2000 , then the RCE would be improper because under the RCE Final Rule, a RCE may not be filed before the prosecution in an application is closed. See 37 CFR 1.114(a) and Request for Continued Examination Practice and Changes to Provisional Application Practice; Final Rule , 65 FR 50092 (Aug. 16, 2000),  1238 Off. Gaz. Pat. Office 13 (Sept. 5, 2000).

For the purpose of filing a RCE, the prosecution in an application is closed when the application is under appeal, or the last Office action is a final action, a notice of allowance or a Quayle action.

(b) Even though the RCE is improper (because it was filed on or after August 16, 2000 and before the prosecution is closed), the amendment submitted with the RCE would still be entered and considered by the examiner since it was timely filed and responsive to the non-final Office action in compliance with 37 CFR 1.111.

A5. What is/is not a submission under 37 CFR 1.114?

A submission as used in 37 CFR 1.114 includes, but is not limited to, an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. See 37 CFR 1.114(c). The definition for a “submission” in 37 CFR 1.114 is the same as the definition in 37 CFR 1.129(a). If reply to an Office action under 35 U.S.C. § 132 is outstanding, the submission must meet the reply requirements of 37 CFR 1.111. See 37 CFR 1.114(c). Thus, an applicant may file a submission under 37 CFR 1.114 containing only an information disclosure statement (37 CFR 1.97 and 1.98) in an application subject to a notice of allowance under 35 U.S.C. § 151. An appeal brief or a reply brief (or related papers) will not be considered a submission under 37 CFR 1.114. See 37 CFR 1.114(d). The submission, however, may consist of the arguments in a previously filed appeal brief or reply brief, or may simply consist of a statement that incorporates by reference the arguments in a previously filed appeal brief or reply brief. In addition, a previously filed amendment after final may satisfy this submission requirement.

A6. What is the status of unentered after final amendments upon the filing of a RCE (and fee)?

Upon the filing of a RCE (and fee), the finality of the last Office action is withdrawn . Any previously filed unentered amendments, amendments filed with the RCE, and any amendments filed prior to the mailing of the next Office action (after the RCE) are to be entered. Any conflicting amendments should be clarified for entry by the applicant upon filing the RCE (and fee). Absent specific instructions for entry, all amendments filed as of the date the RCE is filed are entered in the order in which they were filed.

A7. What submission is required if applicant has submitted arguments after final which were (1) entered by the examiner (2) not found persuasive by the examiner in the prior prosecution and (3) an advisory action to that effect was mailed?

Prior to submitting the request for continued examination (and fee), the final rejection continues as modified by the advisory action. The request for continued examination (and fee) may be accompanied by new arguments or amendments. The request for continued examination, however, need not be accompanied by new arguments or amendments. 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 responsive within the meaning of 37 CFR 1.111 to the Office action. Consideration of whether any submission is responsive within the meaning of 37 CFR 1.111 to the last outstanding Office action is done without factoring in the "final" status of such outstanding Office action. Thus, a reply which might not be acceptable as a reply under 37 CFR 1.113 when the application is under a final rejection may very well be acceptable as a reply under 37 CFR 1.111.

A8. How should a conditional RCE be treated?

If a submission is accompanied by a "conditional" RCE and payment of the RCE fee (37 CFR 1.17(e) ( i.e. , an authorization to charge the 37 CFR 1.17(e) fee to a deposit account in the event that the submission would not otherwise be entered), the Office will treat the "conditional" RCE and payment as if a RCE and payment of the fee set forth in 37 CFR 1.17(e) had been filed.

A9. How should new matter in an amendment entered pursuant to 37 CFR 1.114 be treated?

35 U.S.C. § 132(a) provides that "[n]o amendment shall introduce new matter into the disclosure of the invention." Any amendment entered pursuant to 37 CFR 1.114 that is determined to contain new matter should be treated in the same manner that a reply under 37 CFR 1.111 determined to contain new matter is currently treated. See MPEP 706.03(o). In those instances in which an applicant seeks to add new matter to the disclosure of an application, the procedure in 37 CFR 1.114 is not available, and the applicant must file a continuation-in-part application under 37 CFR 1.53(b) containing such new matter. In addition, as 35 U.S.C. § 132(b) and 37 CFR 1.114 provide continued examination of an application (and not examination of a continuing application), the applicant cannot file a RCE to obtain continued examination on the basis of claims that are independent and distinct from the claims previously claimed and examined as a matter of right (i.e., applicant cannot switch inventions) ( see 37 CFR 1.145).

A10. Can the next Office action after the filing of a request for continued examination under 37 CFR 1.114 be made final?

The action immediately subsequent to the filing of a RCE with a submission and fee under 37 CFR 1.114 may be made final only if the conditions set forth in MPEP 706.07(b) for making a first action final in a continuing application are met.

A11. What if a request for continued examination under 37 CFR 1.114 is filed in an application under final rejection?

If an applicant timely files a RCE with the fee set forth in 37 CFR 1.17(e) and a submission, the Office will withdraw the finality of any Office action to which a reply is outstanding and the submission will be entered and considered. See 37 CFR 1.114(d). If the application is under final rejection, a submission meeting the reply requirements of 37 CFR 1.111 must be timely received to continue prosecution of an application. In other words, the mere request for, and payment of the fee for, continued examination will not operate to toll the running of any time period set in the previous Office action for reply to avoid abandonment of the application.

A12. What if a RCE is filed with a submission and the required fee after final rejection but the submission does not meet the reply requirements of 37 CFR 1.111?

If reply to an Office action is outstanding and the submission is not fully responsive to the prior Office action, then it must be a bona fide attempt to provide a complete reply to the prior Office action in order for the RCE to toll the period for reply. If the submission is a bona fide attempt to provide a complete reply, applicant should be informed that the submission is not fully responsive to the prior Office action, along with the reasons why, and given a new shortened statutory period of one month or thirty days (whichever is longer) to complete the reply. See 37 CFR 1.135(c). If the submission is not a bona fide attempt to provide a complete reply, the RCE will not toll the period for reply and the application will be abandoned after the expiration of the statutory period for reply.

A13. What if a request for continued examination under 37 CFR 1.114 is filed in an allowed application?

The phrase “withdraw the finality of any Office action” in 37 CFR 1.114(d) includes the withdrawal of the finality of a final rejection, as well as the closing of prosecution by an Office action under Ex parte Quayle , 1935 Comm’r Dec. 11 (1935), or notice of allowance under 35 U.S.C. § 151 (or notice of allowability). Therefore, if an applicant files a RCE with the fee set forth in 37 CFR 1.17(e) and a submission in an application which has been allowed, prosecution will be reopened. If the issue fee has been paid, however, payment of the fee for a RCE and a submission without a petition under 37 CFR 1.313 to withdraw the application from issue will not avoid issuance of the application as a patent.

A14. If a request for continued examination under 37 CFR 1.114 is filed in an allowed application after the issue fee has been paid and a petition under 37 CFR 1.313 is also filed and granted, does the applicant have to pay the issue fee again if the application is thereafter allowed? (Updated on 2/27/02)

No. If the issue fee has been paid and prosecution is reopened, the applicant may not obtain a refund of the issue fee. If, however, the application is subsequently allowed, applicant may request that the previously submitted issue fee be applied toward payment of the issue fee required by the new notice of allowance. Such request should be sent as a reply to the new notice of allowance.

A15. What if a request for continued examination under 37 CFR 1.114 is filed in an application after the filing of Notice of Appeal to the Board of Patent Appeals and Interferences but prior to a decision on the appeal?

If an applicant files a request for continued examination under 37 CFR 1.114 after the filing of a Notice of Appeal to the Board of Patent Appeals and Interferences, but prior to a decision on the appeal, it will be treated as a request to withdraw the appeal and to reopen prosecution of the application before the examiner. See 37 CFR 1.114(d). Thus, the filing of a request for continued examination under § 1.114 in an application containing an appeal awaiting a decision on the appeal will be treated as a withdrawal of the appeal by the applicant, regardless of whether the request for continued examination under 37 CFR 1.114 includes the appropriate fee (37 CFR 1.17(e)) or a submission (37 CFR 1.114(c)).

If a RCE is filed in an application after appeal to the Board of Patent Appeals and Interferences but the request does not include the fee required by 37 CFR 1.17(e) or the submission required by 37 CFR 1.114, or both, the examiner should withdraw the appeal pursuant to 37 CFR 1.114. The proceedings as to the rejected claims are considered terminated. Therefore, if no claim is allowed, the application is abandoned. See MPEP 1215.01. If there is at least one allowed claim, the application should be passed to issue on the allowed claim(s). If there is at least one allowed claim but formal matters are outstanding, applicant should be given a shortened statutory period of one month or thirty days (whichever is longer) in which to correct the formal matters.

A16. What if a request for continued examination under 37 CFR 1.114 is filed in an application after a decision by the Board of Patent Appeals and Interferences but before further appeal or civil action?

The filing of a request for continued examination (accompanied by the fee and a submission) after a decision by the Board of Patent Appeals and Interferences, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit (Federal Circuit) or the commencement of a civil action, will also result in the finality of the rejection or action being withdrawn and the submission being considered. In addition to the res judicata effect of a Board of Patent Appeals and Interferences decision in an application ( see MPEP 706.03(w)), a Board of Patent Appeals and Interferences decision in an application is the "lawof the case," and is thus controlling in that application and any subsequent, related application. See MPEP 1214.01 (where a new ground of rejection is entered by the Board of Patent Appeals and Interferences pursuant to 37 CFR 1.196(b), argument without either amendment of the claims so rejected or the submission of a showing of facts can only result in a final rejection of the claims, since the examiner is without authority to allow the claims unless amended or unless the rejection is overcome by a showing of facts not before the Board of Patent Appeals and Interferences). As such, a submission containing arguments without either amendment of the rejected claims or the submission of a showing of facts will not be effective to remove such rejection.

A17. What if a request for continued examination under 37 CFR 1.114 is filed in an application after the filing of a Notice of Appeal to the Federal Circuit or the commencement of a civil action?

The procedure set forth in 37 CFR 1.114 is not available in an application after the filing of a Notice of Appeal to the Federal Circuit or the commencement of a civil action, unless the appeal or civil action is terminated and the application is still pending. If a RCE is filed in an application that has undergone court review, the application should be brought to the attention of the SPE or SPRE to determine whether the RCE is proper.

A18. Can a CPA still be filed after May 29, 2000? (Updated on 2/27/02)

37 CFR 1.53(d)(1)(i) has been amended to provide that continued prosecution application (CPA) practice under 37 CFR 1.53(d) does not apply to applications (other than design) if the prior application has a filing date on or after May 29, 2000. Thus, an application (except for a design application) must have an actual filing date before May 29, 2000 for the applicant to be able to file a CPA of that application. While the Office uses the filing date (and application number) of the prior application of a CPA for identification purposes, the filing date of a CPA under 37 CFR 1.53(d) is the date the request for a CPA is filed. See 37 CFR 1.53(d)(2). Thus, if a CPA of an application (other than for a design patent) is filed on or after May 29, 2000, 37 CFR 1.53(d)(1)(i) does not permit the filing of a further CPA, regardless of the filing date of the prior application as to the first CPA ( i.e. , the filing date used for identification purposes for the CPA).

Please see CE1 for information on publication of continued prosecution applications.

A19. What if an applicant files a request for a CPA of a utility or plant application that was filed on or after May 29, 2000? (Updated 7/30/01; updated 2/27/02)

In the event that an applicant files a request for a CPA of a utility or plant application that was filed on or after May 29, 2000 (to which CPA practice no longer applies), the Office will automatically treat the improper CPA as a request for continued examination (RCE) of the prior application (identified in the request for CPA) if all the requirements under 37 CFR 1.114 are met (e.g., the request was filed with a submission and fee, and the prosecution is closed). If the requirements are not met, a Notice of Improper RCE will be sent to applicant and the time period for reply continues to run from the mailing of the last Office action or notice. If the time period expires, the application will be abandoned.

A20. How does the RCE procedure under 37 CFR 1.114 differ from the transitional procedure set forth in 37 CFR 1.129(a) and CPA procedure set forth in 37 CFR 1.53(d)?

The request for continued examination (RCE) procedure in 37 CFR 1.114 should not be confused with the transitional procedure for the further limited examination of patent applications set forth in 37 CFR 1.129(a) or the continued prosecution application (CPA) procedure set forth in 37 CFR 1.53(d). This chart provides a comparison of the three different procedures.

 http://www.uspto.gov/web/offices/dcom/olia/aipa/RCECPA.pdf [PDF]

A21. has been deleted as being obsolete (8/01/02).

A22. If a RCE is filed after the mailing of a Notice of Allowance but before payment of the issue fee, is a petition under 37 CFR 1.313 to withdraw the application from issue required?

No. If a RCE (with the fee and a submission) is filed in an allowed application prior to payment of the issue fee, a petition to withdraw the application from issue is not required. If the issue fee has been paid, however, filing of a RCE (with the fee and a submission) without a petition to withdraw the application from issue will not avoid issuance of the application as a patent. See 37 CFR 1.114(a).

A23. Has been deleted because the information is repeated in A22.

A24. Does amended 35 U.S.C. 119(e) enable a nonprovisional application to claim priority based on a corresponding provisional application when the nonprovisional is filed more than 12 months after the filing of the provisional? (Updated on 2/27/02)

No. 37 U.S.C. 119(e)(1) still requires that a nonprovisional application be filed within twelve months of the filing date of the provisional application for the nonprovisional application to claim the benefit of the filing date of the provisional application. Under 35 U.S.C. 21(b), if this twelve-month period expires on a non-business day, it is extended to expire on the next business day.

For more information on provisional and nonprovisional applications, see  http://www.uspto.gov/web/patents/types.htm.

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