Request for Continued Examination After Notice of Allowance
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706.07(h) Request for Continued Examination (RCE) Practice - 700 Examination of Applications
706.07(h) Request for Continued Examination (RCE) Practice [R-1]
**>35 U.S.C. 132 < Notice of rejection; reexamination.
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(b) The Director shall prescribe regulations to provide for the continued examination of applications for patent at the request of the applicant. The Director may establish appropriate fees for such continued examination and shall provide a 50 percent reduction in such fees for small entities that qualify for reduced fees under section 41(h)(1) of this title.
37 CFR 1.114 Request for continued examination.
(a) If prosecution in an application is closed, an applicant may request continued examination of the application by filing a submission and the fee set forth in § 1.17(e) prior to the earliest of:
(1) Payment of the issue fee, unless a petition under § 1.313 is granted;
(2) Abandonment of the application; or
(3) The filing of a notice of appeal to the U.S. Court of Appeals for the Federal Circuit under 35 U.S.C. 141, or the commencement of a civil action under 35 U.S.C. 145 or 146, unless the appeal or civil action is terminated.
(b) Prosecution in an application is closed as used in this section means that the application is under appeal, or that the last Office action is a final action (§ 1.113), a notice of allowance (§ 1.311), or an action that otherwise closes prosecution in the application.
(c) A submission as used in this section 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. If reply to an Office action under 35 U.S.C. 132 is outstanding, the submission must meet the reply requirements of § 1.111.
(d) If an applicant timely files a submission and fee set forth in § 1.17(e), the Office will withdraw the finality of any Office action and the submission will be entered and considered. If an applicant files a request for continued examination under this section after appeal, 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. An appeal brief under § 1.192 or a reply brief under § 1.193(b), or related papers, will not be considered a submission under this section.
(e) The provisions of this section 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.
35 U.S.C. 132(b) provides for continued examination of an application at the request of the applicant (request for continued examination or RCE) upon payment of a fee, 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 the RCE practice, 37 CFR 1.114 provides a procedure under which an applicant may obtain continued examination of an application in which prosecution is closed (e.g., the application is under final rejection or a notice of allowance) by filing a submission and paying a specified fee.
I. CONDITIONS FOR FILING AN RCE
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 RCE provisions of 37 CFR 1.114 do not apply to:
(A) a provisional application;
(B) an application for a utility or plant patent filed under 35 U.S.C. 111(a) before June 8, 1995;
(C) an international application filed under 35 U.S.C. 363 *>before June< 8, 1995;
(D) an application for a design patent; or
(E) a patent under reexamination.
See 37 CFR 1.114(e).
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:
(A) payment of the issue fee (unless a petition under 37 CFR 1.313 >is granted);<
(B) abandonment of the application; or
(C) the filing of a notice of appeal to the U.S. Court of Appeals for the Federal Circuit or the commencement of a civil action (unless the appeal or civil action is terminated).
See 37 CFR 1.114(a). An applicant cannot request continued examination of an application until after prosecution in the application is closed. See 37 CFR 1.114(a). Prosecution in an application is closed if the application is under appeal, or the last Office action is a final action (37 CFR 1.113), a notice of allowance (37 CFR 1.311), or an action that otherwise closes prosecution in the application (e.g., an Office action under Ex parte Quayle, 1935 Comm'r Dec. 11 (1935)).
II. SUBMISSION REQUIREMENT
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). See MPEP § 706.07(g) for transitional after-final practice under 37 CFR 1.129(a). If a 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 (whether or not entered) may satisfy this submission requirement.
Arguments submitted after final rejection, which were entered by the examiner but not found persuasive, may satisfy the submission requirement if 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 be acceptable as a reply under 37 CFR 1.111.
III. INITIAL PROCESSING
An RCE will be initially processed by the Technology Center (TC) assigned the application. Technical support personnel in the TC will verify that:
(A) the RCE was filed on or after May 29, 2000;
(B) the application was filed on or after June 8, 1995;
(C) the application is a utility or plant application (e.g., not a design application);
(D) the application was pending (i.e., not patented or abandoned) when the RCE was filed;
(E) prosecution in the application is closed (e.g., the last Office action is a final rejection, notice of allowance, or an Office action under Ex parte Quayle, 1935 Comm'r Dec. 11 (1935), or the application is under appeal);
(F) the RCE was filed before the payment of the issue fee or, if not, a petition under 37 CFR 1.313 to withdraw the application from issue was filed and granted;
(G) the RCE was accompanied by the proper fee(s) including the RCE fee under 37 CFR 1.17(e); and
(H) the RCE included a submission as required by 37 CFR 1.114.
A. Treatment of Improper RCE
If one or more conditions for filing an RCE have not been satisfied, applicant will be so notified. Generally, a "Notice of Improper Request for Continued Examination (RCE)," Form PTO-2051, will be mailed to applicant. An improper RCE 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.
If an examiner discovers that an improper RCE has been forwarded to the examiner in error, the application should be immediately returned to a head supervisory legal instruments examiner (HSLIE) within the TC.
1. Prosecution Is Not Closed
If prosecution in the application is not closed, applicant will be notified of the improper RCE and any amendment/reply will be entered. Thereafter, the application will be forwarded to the examiner for consideration of the amendment/reply under 37 CFR 1.111.
2. Application Is Under Appeal
If the application is under appeal and the RCE was not accompanied by the fee set forth in 37 CFR 1.17(e) and/or a submission as required by 37 CFR 1.114, the application will be forwarded to the examiner for appropriate treatment and applicant will be notified of the improper RCE (See subsection X below).
B. Ambiguous Transmittal Paper
If an applicant files a transmittal paper that is ambiguous as to whether it is a continued prosecution application (CPA) under 37 CFR 1.53(d) or a request for continued examination (RCE) under 37 CFR 1.114 (e.g., contains references to both an RCE and a CPA), and the application is eligible for either a CPA or an RCE (i.e., a plant or utility application filed on or after June 8, 1995, but before May 29, 2000), that ambiguity will be resolved in favor of treating the transmittal paper as a request for a CPA under 37 CFR 1.53(d). Other papers filed with the transmittal paper (e.g., a preliminary amendment or information disclosure statement) will not be taken into account in determining whether a transmittal paper is a CPA, or an RCE, or ambiguous as to whether it is a CPA or an RCE.
C. Treatment of Conditional RCE
If a submission is accompanied by a "conditional" RCE and payment of the RCE fee under 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 an RCE and payment of the fee set forth in 37 CFR 1.17(e) had been filed.
D. Treatment of Proper RCE
If the conditions for filing an RCE have been satisfied, the technical support personnel will process the RCE. 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) will normally be entered. 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. If conflicting amendments have been previously filed, applicant should clarify which amendments should be entered upon filing the RCE (and fee). Applicants are encouraged to file all amendments no later than the filing of the RCE to avoid disapproval of entry under 37 CFR 1.111(b). See MPEP § 714.03(a). If additional time is needed to prepare and file a supplement (e.g., affidavit or declaration containing test data) to the previously filed submission, applicant should consider filing a suspension of action by the Office under 37 CFR 1.103(c) with the RCE. For more details on suspension of action, see MPEP § 709.
After entry of any amendments and processing of the fee(s), the application will be forwarded to the examiner. Unlike a CPA, applicant does not need to pay a fee for excess claims previously paid for prior to the filing of the RCE. Of course, new claims in excess of the number previously paid for, which are filed with the RCE or thereafter, will require payment of the appropriate fees(s) under 37 CFR 1.16.
IV. IMPROPER CPA TREATED AS RCE
37 CFR 1.53(d)(1)(i) has been amended to provide that 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).
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 an RCE of the prior application (identified in the request for CPA) under 37 CFR 1.114. If the CPA does not satisfy the requirements of 37 CFR 1.114 to be a proper RCE (e.g., lacks a submission under 37 CFR 1.114(b), or is not accompanied by the fee set forth in 37 CFR 1.17(e)), the improper CPA will still be treated as an RCE (albeit an improper RCE), and the time period set in the last Office action (or notice of allowance) will continue to run. If the time period (considering any available extension under 37 CFR 1.136(a)) has expired, the applicant will need to file a petition under 37 CFR 1.137 (with the lacking submission under 37 CFR 1.114(b) or fee set forth in 37 CFR 1.17(e)) to revive the abandoned application.
If an applicant files a request for a CPA of an application to which CPA practice no longer applies and the CPA satisfies the requirements of 37 CFR 1.114 to be a proper RCE, but the applicant does not want the request for a CPA to be treated as a RCE under 37 CFR 1.114 (e.g., the CPA is a divisional CPA), the applicant may file a petition under 37 CFR 1.53(e) requesting that the improper CPA be converted to an application under 37 CFR 1.53(b). A petition under 37 CFR 1.53(e) to accept and treat an improper application filed under 37 CFR 1.53(d) as a proper application under 37 CFR 1.53(b) must include:
(A) the $130.00 petition fee;
(B) a true copy of the complete nonprovisional application, as filed, designated as the prior nonprovisional application in the application papers filed under 37 CFR 1.53(d);
(C) any amendments entered in the prior nonprovisional application;
(D) any amendments submitted but not entered in the prior nonprovisional application and directed to be entered in the application papers filed under 37 CFR 1.53(d); and
(E) an executed oath or declaration under 37 CFR 1.63, if one has not already been submitted with the application papers filed under 37 CFR 1.53(d).
The Office will not grant such a petition unless the petition is before an appropriate deciding official before an Office action has been mailed in response to the RCE under 37 CFR 1.114 (as the improper CPA is being treated). If an Office action has been mailed in response to the RCE, the applicant should then simply file a new application under 37 CFR 1.53(b) within the period for reply to such Office action.
Form paragraph 7.42.15 should be used by the examiner to inform applicant that a CPA is being treated as a RCE.
¶ 7.42.15 Continued Prosecution Application Treated as Continued Examination under 37 CFR
1.114
The request for a continued prosecution application (CPA) under 37 CFR 1.53(d) filed on [1] is acknowledged. 37 CFR 1.53(d)(1) was amended to provide that the prior application of a CPA must be: (1) a utility or plant application that was filed under 35 U.S.C. 111(a) before May 29, 2000, (2) a design application, or (3) the national stage of an international application that was filed under 35 U.S.C. 363 before May 29, 2000. See Changes to Application Examination and Provisional Application Practice, final rule, 65 Fed. Reg. 50092 (Aug. 16, 2000), 1238 Off. Gaz. Pat. Office 13 (Sept. 5, 2000).Since a CPA of this application is not permitted under 37 CFR 1.53(d)(1), the improper request for a CPA is being treated as a request for continued examination of this application under 37 CFR 1.114.
Examiner Note
1. Use this form paragraph to advise the applicant that a CPA is being treated as an RCE.
2. Also use form paragraph 7.42.04, 7.42.05, 7.42.06, or 7.42.07 as applicable, to acknowledge entry of applicant"s submission if the fee set forth in 37 CFR 1.17(e) has been timely paid.
3. If the fee set forth in 37 CFR 1.17(e) and/or a submission as required by 37 CFR 1.114 is/are missing and the application is not under appeal, a Notice of Improper Request for Continued Examination should be mailed. If the application is under appeal and the fee set forth in 37 CFR 1.17(e) and/or submission is/are missing, this form paragraph should be followed with one of form paragraphs 7.42.10 - 7.42.14, as applicable.
V. AFTER FINAL REJECTION
If an applicant timely files an 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.
Form paragraph 7.42.04 should be used to notify applicant that the finality of the previous Office action has been withdrawn.
¶ 7.42.04 Continued Examination under 37 CFR
1.114 after Final Rejection
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant"s submission filed on [1] has been entered.
Examiner Note
1. Use this form paragraph if a request for continued examination (RCE), including the fee set forth in 37 CFR 1.17(e) and a submission, was filed after a final rejection.
2. In bracket 1, insert the date(s) of receipt of the submission. The submission may be a previously filed amendment(s) after final rejection and/or an amendment accompanying the RCE. As set forth in 37 CFR 1.114, a submission may include an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. If a reply to the Office action is outstanding the submission must meet the reply requirements of 37 CFR 1.111. Use instead form paragraph 7.42.08 if the submission does not comply with 37 CFR 1.111. Arguments which were previously submitted in a reply after final rejection, which were entered but not found persuasive, may be considered a submission under 37 CFR 1.114 if the arguments are responsive within the meaning of 37 CFR 1.111 to the outstanding Office action. If the last sentence of this form paragraph does not apply (e.g., the submission consists of previously entered arguments), it may be deleted or modified as necessary.
3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. The RCE must be filed on or after May 29, 2000.
VI. NOT FULLY RESPONSIVE SUBMISSION
If reply to a final Office action is outstanding and the submission is not fully responsive to the final Office action, then it must be a bona fide attempt to provide a complete reply to the final 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 final 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). Form paragraph 7.42.08 set forth below should be used.
If the submission is not a bona fide attempt to provide a complete reply, the RCE should be treated as an improper RCE. Thus, a "Notice of Improper Request for Continued Examination (RCE)," Form PTO-2051, should be prepared by the technical support personnel and mailed to applicant indicating that the request was not accompanied by a submission as required by 37 CFR 1.114. The RCE will not toll the period for reply and the application will be abandoned after the expiration of the statutory period for reply if no submission complying with 37 CFR 1.111 is filed. For example, if reply to a final Office action is outstanding and the submission only includes an information disclosure statement (IDS), the submission (i.e., the IDS) will not be considered a bona fide attempt to provide a complete reply to the final Office action and the period for reply will not be tolled.
¶ 7.42.08 Request For Continued Examination With Submission Filed Under 37 CFR
1.114 Which is Not Fully Responsive
Receipt is acknowledged of a request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e) and a submission, filed on [1]. The submission, however, is not fully responsive to the prior Office action because [2]. Since the submission appears to be a bona fide attempt to provide a complete reply to the prior Office action, applicant is given a shortened statutory period of ONE MONTH or THIRTY DAYS from the mailing date of this letter, whichever is longer, to submit a complete reply. This shortened statutory period for reply supersedes the time period set in the prior Office action. This time period may be extended pursuant to 37 CFR 1.136(a).
Examiner Note
1. Use this form paragraph to acknowledge an RCE filed with the fee and a submission where the submission is not fully responsive to the prior Office action. This form paragraph may be used for any RCE filed with a submission which is not fully responsive, i.e., an RCE filed after final rejection, after allowance, after an Office action under Ex parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935), or after appeal.
2. In bracket 2, identify the reasons why the examiner considers the submission not to be fully responsive.
3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. The RCE must be filed on or after May 29, 2000.
VII. NEW MATTER
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 an 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).
VIII. FIRST ACTION FINAL AFTER FILING AN RCE
The action immediately subsequent to the filing of an 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.
Form paragraph 7.42.09 should be used if it is appropriate to make the first action after the filing of the RCE final.
¶ 7.42.09 Action Is Final, First Action Following Request for Continued Examination under 37 CFR
1.114
All claims are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR 1.114 and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Note
This form paragraph is for a first action final rejection following a Request for Continued Examination filed under 37 CFR 1.114.
IX. AFTER ALLOWANCE OR QUAYLE ACTION
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 an 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 an 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. If an RCE (with the fee and a submission) is filed in an allowed application prior to payment of the issue fee, a petition under 37 CFR 1.313 to withdraw the application from issue is not required.
If an RCE 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, the applicant does not have to pay the issue fee again if the application is thereafter allowed. 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.
Form paragraph 7.42.05 should be used to notify applicant that prosecution has been reopened.
¶ 7.42.05 Continued Examination Under 37 CFR
1.114 After Allowance or Quayle Action
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on [1] has been entered.
Examiner Note
1. Use this form paragraph if a request for continued examination (RCE), including the fee set forth in 37 CFR 1.17(e) and a submission, was filed after a notice of allowance (or notice of allowability) or Office action under Ex parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935).
2. In bracket 1 insert the date(s) of receipt of the submission. As set forth in 37 CFR 1.114, a submission may include an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability.
3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. The RCE must be filed on or after May 29, 2000.
4. If the RCE was filed after the issue fee was paid, a petition under 37 CFR 1.313 to withdraw the application from issue must have been filed and granted.
X. AFTER APPEAL BUT BEFORE DECISION BY THE BOARD
If an applicant files an RCE 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 an RCE under 37 CFR 1.114 in an application on appeal awaiting a decision by the Board 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)). Applicants should advise the Board of Patent Appeals and Interferences when an RCE under 37 CFR 1.114 is filed in an application containing an appeal awaiting decision. Otherwise, the Board of Patent Appeals and Interferences may refuse to vacate a decision rendered after the filing (but before the recognition by the Office) of an RCE under 37 CFR 1.114.
Form paragraph 7.42.06 should be used to notify applicant that the appeal has been withdrawn and prosecution has been reopened.
¶ 7.42.06 Continued Examination Under 37 CFR
1.114 After Appeal But Before A Board Decision
A request for continued examination under 37 CFR 1.114 was filed in this application after appeal to the Board of Patent Appeals and Interferences, but prior to a decision on the appeal. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on [1] has been entered.
Examiner Note
1. Use this form paragraph if a request for continued examination (RCE), including the fee set forth in 37 CFR 1.17(e) and a submission, was filed after a Notice of Appeal or an appeal brief, but there has not been a decision on the appeal. Note that it is not necessary for an appeal brief to have been filed.
2. As set forth in 37 CFR 1.114, a submission may include an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. The submission may consist of arguments in a previously filed appeal brief or reply brief, or an incorporation of such arguments in the transmittal letter or other paper accompanying the RCE.
3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. The RCE must be filed on or after May 29, 2000.
If an 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. Form paragraphs 7.42.10-7.42.14 should be used as appropriate.
¶ 7.42.10 Application On Appeal, Request For Continued Examination Under 37 CFR
1.114 Without Submission/Fee; No Claims Allowed
A request for continued examination under 37 CFR 1.114 was filed in this application on [1] after appeal to the Board of Patent Appeals and Interferences. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114. The request, however, lacks the fee required by 37 CFR 1.17(e) and/or the submission required by 37 CFR 1.114. Since the proceedings as to the rejected claims are considered terminated, and no claim is allowed, the application is abandoned. See MPEP 1215.01.
Examiner Note
1. If a request for continued examination was filed after a Notice of Appeal or after an appeal brief, but before a decision on the appeal, and the request lacks the fee set forth in 37 CFR 1.17(e) or a submission or both, use this form paragraph to withdraw the appeal and hold the application abandoned if there are no allowed claims.
2. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. The RCE must be filed on or after May 29, 2000.
¶ 7.42.11 Application On Appeal, Request For Continued Examination Under 37 CFR
1.114 Without Submission; Claim Allowed
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application on [1] after appeal to the Board of Patent Appeals and Interferences. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114. The request, however, lacks the submission required by 37 CFR 1.114. Since the proceedings as to the rejected claims are considered terminated, the application will be passed to issue on allowed claim[2] . Claim[3] been canceled. See MPEP § 1215.01.
Examiner Note
1. If a request for continued examination, including the fee, was filed after a Notice of Appeal or after an appeal brief but before a decision on the appeal, and the request lacks the required submission, use this form paragraph to withdraw the appeal and pass the application to issue on the allowed claims.
2. In bracket 3, insert the claim number(s) of the claim(s) which has/have been canceled followed by either --has-- or --have--. Claims which have been indicated as containing allowable subject matter but are objected to as being dependent upon a rejected claim are to be considered as if they were rejected and therefore are to be canceled along with the rejected claims. See MPEP § 1215.01.
3. This form paragraph should be used with the mailing of a Notice of Allowability.
4. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. The RCE must be filed on or after May 29, 2000.
¶ 7.42.12 Application on Appeal, Request for Continued Examination under 37 CFR
1.114 Without Submission; Claim Allowed with Formal Matters Outstanding
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application on [1] after appeal to the Board of Patent Appeals and Interferences. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114. The request, however, lacks the submission required by 37 CFR 1.114. The proceedings as to the rejected claims are considered terminated, and the application will be passed to issue on allowed claim [2] provided the following formal matters are promptly corrected: [3]. Prosecution is otherwise closed. See MPEP § 1215.01. Applicant is required to make the necessary corrections addressing the outstanding formal matters within a shortened statutory period set to expire ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter. Extensions of time may be granted under 37 CFR 1.136.
Examiner Note
1. If a request for continued examination, including the fee, was filed after a Notice of Appeal or an appeal brief but before a decision on the appeal, and the request lacks the required submission, use this form paragraph to withdraw the appeal if there are allowed claims but outstanding formal matters need to be corrected.
2. In bracket 3, explain the formal matters which must be corrected.
3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. The RCE must be filed on or after May 29, 2000.
**>
¶ 7.42.13 Application on Appeal, Request for Continued Examination under 37 CFR
1.114 Without Fee; Claim Allowed
A request for continued examination under 37 CFR 1.114, including a submission, was filed in this application on [1] after appeal to the Board of Patent Appeals and Interferences. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114. The request, however, lacks the fee required by 37 CFR 1.17(e). Therefore, the submission has not been entered. See 37 CFR 1.116(c). Since the proceedings as to the rejected claims are considered terminated, the application will be passed to issue on allowed claim[2]. Claim[3] been canceled. See MPEP § 1215.01.
Examiner Note
1. If a request for continued examination, including the submission, was filed after a Notice of Appeal or an appeal brief but before a decision on the appeal, and the request lacks the required fee, use this form paragraph to withdraw the appeal and pass the application to issue on the allowed claims.
2. In bracket 3, insert the claim number(s) of the claim(s) which has/have been canceled followed by either --has-- or --have--. Claims which have been indicated as containing allowable subject matter but are objected to as being dependent upon a rejected claim are to be considered as if they were rejected and therefore are to be canceled along with the rejected claims. See MPEP § 1215.01.
3. This form paragraph should be used with the mailing of a Notice of Allowability.
4. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. The RCE must be filed on or after May 29, 2000.
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¶ 7.42.14 Application on Appeal, Request for Continued Examination under 37 CFR
1.114 Without Fee; Claim Allowed With Formal Matters Outstanding
A request for continued examination under 37 CFR 1.114, including a submission, was filed in this application on [1] after appeal to the Board of Patent Appeals and Interferences. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114. The request, however, lacks the fee required by 37 CFR 1.17(e). Therefore, the submission has not been entered. See 37 CFR 1.116(c). The proceedings as to the rejected claims are considered terminated, and the application will be passed to issue on allowed claim[2] provided the following formal matters are promptly corrected: [3]. Prosecution is otherwise closed. See MPEP § 1215.01.Applicant is required to make the necessary corrections addressing the outstanding formal matters within a shortened statutory period set to expire ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter. Extensions of time may be granted under 37 CFR 1.136.
Examiner Note
1. If a request for continued examination, including a submission, was filed after a Notice of Appeal or an appeal brief but before a decision on the appeal, and the request lacks the fee required by 37 CFR 1.17(e), use this form paragraph to withdraw the appeal if there are allowed claims but outstanding formal matters need to be corrected.
2. In bracket 3, explain the formal matters that must be corrected.
3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. The RCE must be filed on or after May 29, 2000.
XI. AFTER DECISION BY THE BOARD
A. Proper RCE After Board Decision
The filing of an RCE (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 in federal district court, 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 decision in an application is the "law of 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.
Form paragraph 7.42.07 should be used to notify applicant that the appeal has been withdrawn and prosecution has been reopened.
¶ 7.42.07 Continued Examination under 37 CFR
1.114 after Board Decision but Before Further Appeal or Civil Action
A request for continued examination under 37 CFR 1.114 was filed in this application 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 or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on [1] has been entered.
Examiner Note
1. Use this form paragraph if a request for continued examination (RCE), including the fee set forth in 37 CFR 1.17(e) and a submission, was timely filed after a decision by the Board of Patent Appeals and Interferences but before further appeal or civil action. Generally, the time for filing a notice of appeal to the Federal Circuit or for commencing a civil action is within two months of the Board"s decision. See MPEP § 1216 and 37 CFR 1.304.
2. A Board of Patent Appeals and Interferences decision in an application has res judicata effect and is the "law of the case" and is thus controlling in that application and any subsequent, related application. Therefore, a submission containing arguments without either an amendment of the rejected claims or the submission of a showing of facts will not be effective to remove such rejection. See MPEP § 706.03(w) and 1214.01.
3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. The RCE must be filed on or after May 29, 2000.
B. Improper RCE After Board Decision
If an RCE is filed after a decision by the Board of Patent Appeals and Interferences, but before the filing of a Notice of Appeal to the Federal Circuit or the commencement of a civil action in federal district court, and the RCE was not accompanied by the fee and/or the submission, the examiner should notify the applicant that the RCE is improper by using form paragraph 7.42.16 set forth below. If the time for seeking court review has passed without such review being sought, the examiner should include the form paragraph with the mailing of a Notice of Allowability or a Notice of Abandonment depending on the status of the claims. See MPEP § 1214.06. If the time for seeking court review remains, the examiner should include the form paragraph on a PTOL-90. No time period should be set. If a submission is filed with the RCE, but the fee is missing, the examiner should also include a statement as to whether or not the submission has been entered. In general, such a submission should not be entered. If, however, the submission is an amendment that obviously places the application in condition for allowance, it should be entered with the approval of the supervisory patent examiner. See MPEP § 1214.07. Form paragraph 7.42.16 should not be used if the application is not a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. In that situation, a "Notice of Improper Request for Continued Examination (RCE)," Form PTO-2051, should be prepared and mailed by the technical support personnel to notify applicant that continued examination does not apply to the application. When the time for seeking court review has passed without such review being sought, the examiner must take up the application for consideration. See MPEP § 1214.06 for guidance on the action to be taken.
¶ 7.42.16 After Board Decision But Before Further Appeal Or Civil Action, Request for Continued Examination Under 37 CFR
1.114 Without Submission and/or Fee
A request for continued examination (RCE) under 37 CFR 1.114 was filed in this application on [1] 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 or the commencement of a civil action. The request, however, lacks the fee required by 37 CFR 1.17(e) and/or the submission required by 37 CFR 1.114. Accordingly, the RCE is improper and any time period running was not tolled by the filing of the improper request.
Examiner Note
1. This form paragraph should be used with the mailing of a Notice of Allowability or a Notice of Abandonment, as appropriate, if the time for seeking court review has passed without such review being sought, or it should be used on a PTOL-90 if time still remains.
2. This form paragraph should not be used if the application is not a utility application or a plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. In that situation, a "Notice of Improper Request for Continued Examination (RCE)," Form PTO-2051, should be prepared and mailed by the technical support personnel to notify applicant that continued examination does not apply to the application.
3. In general, if a submission was filed with the improper RCE in this situation, it should not be entered. An exception exists for an amendment which obviously places the application in condition for allowance. See MPEP § 1214.07. The examiner should also include a statement as to whether or not any such submission has been entered (e.g., "The submission filed with the improper RCE has not been entered.").
XII. AFTER APPEAL TO THE FEDERAL CIRCUIT OR 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 in federal district court, unless the appeal or civil action is terminated and the application is still pending. If an RCE is filed in an application that has undergone court review, the examiner should bring the application to the attention of the supervisory patent examiner or special program examiner in the TC to determine whether the RCE is proper. Unless an application contains allowed claims (or the court's mandate clearly indicates that further action is to be taken by the Office), the termination of an unsuccessful appeal or civil action results in abandonment of the application. See MPEP § 1216.01.
XIII. COMPARISON CHART AND FORMS
A. Comparison with the Transitional Procedure Set Forth in 37 CFR
1.129(a) and the CPA Procedure Set Forth in 37 CFR 1.53(d)
The 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 CPA procedure set forth in 37 CFR 1.53(d). The following chart provides a comparison of the three different procedures.
B. Forms
Form PTO/SB/30, "Request for Continued Examination (RCE) Transmittal," may be used by applicant for filing a RCE under 37 CFR 1.114. The form used by the Technology Centers to notify applicant of an improper RCE, "Notice of Improper Request for Continued Examination (RCE)," Form PTO-2051, is shown below.
| | Continued prosecution application (CPA) under 37�CFR 1.53(d) | URAA transitional practice under 37�CFR 1.129(a) | Request for continued examination (RCE) under 37�CFR 1.114 |
|---|---|---|---|
| 1 | CPA practice is not applicable to provisional applications or during reexamination Note: CPA practice has been made inapplicable to any >utility< or original plant applications filed on or after May�29, 2000 (including reissue) | 37�CFR 1.129(a) practice is applicable only to original utility or original plant applications filed before or on June�8, 1995, and which have been pending for at least two years as of June�8, 1995 (date-wise virtual mutual exclusivity with RCE practice) | RCE practice is not applicable to provisional applications, design applications, applications filed before June�8, 1995, or during reexamination |
| 2 | A CPA may be filed before the prosecution in an application is closed | A submission under 37 CFR 1.129(a) must be filed after final rejection and before an appeal brief is filed | **>A< RCE must be filed after the prosecution in an application is closed |
| 3 | Statutory authority: 35�U.S.C. 111(a), 120, and 121 | Statutory authority: Section 532(a)(2)(A) of Pub. L. 103-465 (uncodified) | Statutory authority: 35�U.S.C. 132(b) |
| 4 | The Office treats a CPA as continued examination of the same application, but it is technically/legally a new application | Further examination under 37�CFR 1.129(a) is in fact continued examination of the same application | A RCE is in fact continued examination of the same application |
| 5 | The applicant may defer paying the filing fee for a CPA under 37�CFR 1.53(g) | The applicant may not defer paying the fee for a submission under 37�CFR 1.129(a) | The applicant may not defer paying the fee for a RCE |
| 6 | The fee for a CPA must be the statutory filing fee: basic filing fee plus any applicable excess claims fees (even if previously paid in the prior application) | The Office sets the fee (fee need not include excess claims fee for claims previously paid for): the fee is set at an amount equal to the basic filing fee of a utility application (small entity reduction is available) | The Office sets the fee for a RCE (RCE fee need not include excess claims fee for claims previously paid for): the RCE fee is set at an amount equal to the basic filing fee of a utility application (small entity reduction is available) |
| 7 | A patent issuing on a CPA filed on or after May�29, 2000, is entitled to the patent term adjustment provisions of the AIPA, regardless of the filing date of any prior application of the CPA A patent issuing on a CPA is not entitled to any patent term adjustment accumulated during prosecution of any prior application of the CPA | An application that is eligible for the transitional practice of 37�CFR 1.129(a) is not entitled to the patent term adjustment provisions of the AIPA | Filing a RCE on or after May�29, 2000, will not cause an application to be entitled to the patent term adjustment provisions of the AIPA If an application is entitled to the patent term adjustment provisions of the AIPA (i.e., was itself filed on or after May�29, 2000), filing a RCE cuts-off the applicants ability to accumulate any additional patent term adjustment against the three-year pendency provision, but does not otherwise affect patent term adjustment |
| 8 | No limit on the number of times an applicant may file a CPA to obtain continued examination | An applicant may have only two (2) submissions entered as a matter of right under 37�CFR 1.129(a) | No limit on the number of times an applicant may file a RCE to obtain continued examination |
| 9 | A CPA is not entitled to the benefit of a Certificate of Mailing under 37�CFR 1.8 | A submission under 37�CFR 1.129(a) is entitled to the benefit of a Certificate of Mailing under 37�CFR 1.8 | A RCE is entitled to the benefit of a Certificate of Mailing under 37�CFR 1.8 |
| 10 | Applicants may file a continuation or divisional CPA, but not a CIP CPA | Applicants may not switch inventions (divisional equivalent) as a matter of right or add new matter (CIP equivalent) | Applicants may not switch inventions (divisional equivalent) as a matter of right or add new matter (CIP equivalent) |
| 11 | A CPA abandons the (previously) pending application: appeals to the BPAI or courts in the prior application become moot automatically | A submission under 37�CFR 1.129(a) does not abandon the (previously and currently) pending application: no appeal issues because Office requires such submission to be filed before an appeal (to BPAI) brief is filed | A RCE does not abandon the (previously and currently) pending application: appeals to the BPAI are dismissed by operation of 37�CFR 1.114 but any pending court action must be dismissed to restore jurisdiction over the application to the Office |
| 12 | Inventorship carries over unless the applicant provides a statement deleting inventors | Inventorship carries/continues: any change must be via 37�CFR 1.48 | Inventorship carries/continues: any change must be via 37�CFR 1.48 |
| 13 | Small entity status does not carry (but can be claimed by reference to status in prior application or payment of small entity filing fee) | Small entity status carries/continues | Small entity status carries/continues |
| 14 | A CPA accompanied by an amendment (preliminary) cancelling all claims makes the CPA improper (not entitled to a filing date) | Submission under 37�CFR 1.129(a) accompanied by an amendment cancelling all claims is simply a non-responsive amendment | RCE accompanied by an amendment cancelling all claims is simply a non-responsive amendment |
| 15 | Submission need not include a reply that is a bona fide attempt to advance the application | Submission must include a reply that is a bona fide attempt to advance the application (37�CFR 1.111) | Submission must include a reply that is a bona fide attempt to advance the application (37�CFR 1.111) if a reply to an Office action is outstanding |
| 16 | A CPA filed on or after November�29, 2000, will be subject to the eighteen-month publication provisions of the AIPA** | Submission on or after November�29, 2000, does not subject application to the eighteen-month publication provisions of the AIPA **; voluntary publication may be requested | Submission on or after November�29, 2000, does not subject application to the eighteen-month publication provisions of the AIPA **; voluntary publication may be requested |
| 17 | A CPA based on the national stage of an international application is an application filed under 35�U.S.C. 111(a) and thus it is subject to restriction practice in accordance with 37�CFR 1.141-1.146 | If a submission is filed in a national stage application under 35�U.S.C. 371, the application is still subject to unity of invention practice in accordance with 37�CFR 1.475 and 1.499 | If a submission is filed in a national stage application under 35�U.S.C. 371, the application is still subject to unity of invention practice in accordance with 37�CFR 1.475 and 1.499 |
Form PTO/SB/30. Request for Continued Examination (RCE) Transmittal 
Form PTO-2051. Notice of Improper Request for Continued Examination (RCE) 
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