RCE

A Request for Continued Examination (RCE) is a procedural tool to continue patent prosecution after a final office action: LEGAL BASIS: 37 C.F.R. § 1.114; available for utility and plant patent applications; NOT available for design patents (use a continuation instead); WHEN AN RCE IS APPROPRIATE: after a final rejection when the applicant wants to make additional claim amendments that go beyond what is allowed under after-final practice; after a final rejection when the examiner's new position in the final rejection (not raised in the non-final) needs response; after a notice of allowance when the applicant wants to amend the claims (unusual but permitted); after a notice of allowance to add claims before issuance (less common); WHAT AN RCE DOES: reopens prosecution to a non-final status; allows submission of new amendments; allows submission of new arguments; allows submission of new declarations or evidence; any pending appeal is dismissed (if RCE filed after notice of appeal but before PTAB decision); WHAT AN RCE DOES NOT DO: does not create a new application; does not give a new filing date; does not restart the examination from scratch; the examiner considers the entire prosecution history; TIMING: must be filed BEFORE abandonment; must be filed BEFORE patent issues; after issuance, an RCE is not available (must use reissue); FILING REQUIREMENTS: RCE request (Form PTO/SB/30); fees (see below); submission = amendment, remarks, new evidence, or 'no amendment' statement; if no amendment or request: the IDS must be filed to avoid abandonment.

RCE costs and patent term impact are critical considerations in the filing decision: RCE FEES (CURRENT — check USPTO fee schedule): large entity: first RCE: $1,800; second or subsequent RCE: $2,650; small entity (50% reduction): first RCE: $900; second RCE: $1,325; micro entity (80% reduction): first RCE: $360; second RCE: $530; USPTO fee increases apply periodically; PATENT TERM ADJUSTMENT (PTA) IMPACT — C-DELAY: under 35 U.S.C. § 154(b), patents receive PTA for USPTO delays in examination; C-delay: ALL time after filing an RCE until the patent issues is counted against the applicant (reduces PTA); formula: PTA = A-delay + B-delay − C-delay − overlap; C-delay = all days of applicant delay including: time to respond to office actions; RCE pendency; IDS submissions that don't meet timely filing requirements; PRACTICAL IMPACT: if an RCE is filed and the application is pending for an additional 2 years, this 2 years is C-delay and reduces PTA by ~730 days; for patents where PTA would have provided significant term extension (e.g., slow-examined pharma or biotech patents), RCE can significantly reduce the effective patent term; COST-BENEFIT ANALYSIS: weigh the cost of RCE (filing fee + attorney time + PTA loss) against: the value of additional claim scope obtained; the strength of the amended claims; the commercial value of the patent; FOR UNIMPORTANT OR SHORT-TERM TECHNOLOGY: if the technology will be obsolete in 5 years, losing PTA may not matter; FOR PHARMA/BIOTECH: PTA is extremely important; every day of C-delay is economically significant.

Before filing an RCE, applicants should consider alternatives that may be more efficient: AFTER-FINAL CONSIDERATION PROGRAM (AFCP 2.0): most important alternative to RCE; available after final rejection; applicant can submit: one or more independent claim amendments that do not broaden the claims; the examiner is authorized to spend up to 3 additional hours conducting search and examination; if the amendment places the application in condition for allowance, the examiner can allow it; if not allowable, the final rejection stands (no change to status); AFCP 2.0 ADVANTAGES: no RCE fee; no additional C-delay; only advantage over RCE if the examiner agrees the claims are allowable; PRE-APPEAL BRIEF CONFERENCE (PABC): 2-page statement requesting conference before filing an appeal brief; a panel of 3 examiners (including primary) reviews the rejection; options: (1) the board affirms the examiner → go to appeal or RCE; (2) the board reverses the examiner → non-final OA or allowance; resolves ~40% of cases without full appeal; low cost (no fee beyond appeal fees if combined); NOTICE OF APPEAL: appeal the final rejection to the PTAB; costs: $860 notice of appeal (large entity) + $1,000 appeal brief fee; longer timeline (12-24 months to PTAB decision); if PTAB reverses, the application is allowed on the appealed claims; if PTAB affirms, can file RCE or continue to Federal Circuit; CONTINUATION APPLICATION: file a new continuation application claiming priority to the parent; advantages: new 20-year term from continuation's filing date; can file broader or narrower claims in the continuation; no C-delay from the parent's prosecution; no limitation on claim amendments in continuation; WHEN CONTINUATION IS BETTER THAN RCE: when new claim strategies are needed; when different product claims vs. method claims are desired; when the original application is near issuance.

RCE prosecution has strategic differences from initial examination: EXAMINER CONTINUITY: after an RCE, the same examiner typically handles the case; this is both an advantage (relationship established) and disadvantage (examiner may be dug in on rejections); FRESH START WITHIN SAME HISTORY: the RCE resets prosecution to non-final status; but the examiner sees the entire prosecution history; the applicant should not simply re-argue positions that have already been rejected; NEW AMENDMENT STRATEGIES: if the prior non-final and final rejections show the examiner's position clearly, the applicant should: make claim amendments that address the exact grounds of rejection; present new arguments and/or evidence not previously submitted; consider whether the claims can be amended to avoid the prior art while maintaining commercial value; EXAMINER INTERVIEW: before or after filing an RCE, an examiner interview can clarify the examiner's position and identify allowable subject matter; interview on the record creates prosecution history; DECLARATION EVIDENCE: if the rejection is for obviousness, submit Rule 1.132 declarations showing: unexpected results; commercial success with nexus; long-felt unmet need; failure of others; COMBINING AMENDMENTS: if multiple rejections exist, each amendment should address each rejection; don't leave any rejection unaddressed; KEEPING CONTINUATION RIGHTS: while an RCE is pending, the applicant can still file a continuation application to capture different claim scope; some prosecutors file both: the RCE (to continue prosecution in the parent case) and a continuation (to develop different claim strategies in parallel); MULTIPLE RCEs: filing 3+ RCEs on the same application signals prosecution difficulty; may attract quality control review; costs are higher for subsequent RCEs; consider whether a continuation or design-around approach would be better.

Understanding the interplay between RCE, PTA, and PTE is critical for high-value patents: PTA vs. PTE — KEY DISTINCTION: PTA (Patent Term Adjustment, § 154(b)): adjusts the 20-year patent term for USPTO delays in processing; applies to utility and plant patents; automatically calculated by USPTO; PTE (Patent Term Extension, § 156): extends term for regulatory approval delays (FDA approval); applies to pharma/medical devices/pesticides; only one extension per product; max 5 years, max 14 years remaining after approval; these are DIFFERENT mechanisms; RCE affects PTA only (not PTE); PTA CALCULATION: the 20-year term runs from earliest effective US filing date; PTA adds days for: A-delay (USPTO failure to meet examination deadlines); B-delay (USPTO examination beyond 3 years from US filing); C-delay reduces the total PTA; C-DELAY FROM RCE: every day from RCE filing until the application either abandons or issues = C-delay; if you file an RCE and it takes 2 more years to issue, that's 730 days of C-delay; PTA WAIVER: applicant can waive PTA rights by submitting an application 'without express abandonment'; if PTA is not important, waiver of PTA does not affect the validity of the patent; IMPORTANCE OF PTA IN PHARMA: pharmaceutical patents often issue 3-5 years after filing (complex prosecution); a drug approved 10 years after filing might have 10 years of patent term left; PTA from A/B-delays might add 3 years; an RCE that adds 2 years of C-delay could reduce PTA from 3 years to 1 year — a significant economic loss; CALCULATING RCE'S PTA IMPACT: before filing an RCE, calculate current accumulated PTA; estimate how long the RCE will add to prosecution; weigh against value of additional claim scope.