RCE Strategy

A Request for Continued Examination (RCE) under 37 C.F.R. § 1.114 allows an applicant to continue prosecution before the USPTO after prosecution has been closed — either after a final Office Action or, importantly, after a Notice of Allowance. WHEN PROSECUTION IS CLOSED: prosecution closes when the applicant receives: (1) a FINAL OFFICE ACTION (rejecting claims as final); (2) a NOTICE OF ALLOWANCE; (3) a Notice of Allowance after appeal; the applicant must either respond to a final rejection or accept the allowance; after prosecution closes, the options are: (a) file an After-Final amendment (limited); (b) file an RCE; (c) file a Notice of Appeal; (d) file a continuation application; WHAT AN RCE DOES: filing an RCE with a submission and the fee reopens prosecution as if the final rejection had not been made; the examiner can issue a new (non-final) Office Action; the applicant has a fresh opportunity to amend and argue; RCE vs. CONTINUATION: an RCE keeps the SAME APPLICATION number and prosecution history; a continuation application is a NEW application, can add new claims, and has a separate patent number when issued; COST: RCE fee = $1,360 (large entity) / $680 (small entity) / $340 (micro entity) as of 2024 (fees change annually); REQUIRED SUBMISSION: an RCE must be accompanied by a 'submission' — typically new or amended claims, arguments, a new oath, or even a statement that no amendments are being made; simply paying the fee without a submission is insufficient.

ADVANTAGES OF FILING AN RCE: (1) KEEPS THE APPLICATION ALIVE: after a final rejection, the only alternatives are an RCE, appeal, or continuation; RCE is often the cheapest and fastest way to continue prosecution; (2) REOPENS PROSECUTION FRESH: the final rejection's procedural constraints are lifted; the applicant can submit new arguments, new prior art of record (IDS), new claim sets, or new declarations; (3) EXAMINER ENGAGEMENT: RCE filing often signals willingness to work with the examiner; examiners may be more receptive to arguments after prosecution has been 'reset'; (4) PRESERVES PRIORITY DATE: unlike a continuation, an RCE does not create a new application — the original priority date is preserved throughout; DISADVANTAGES: (1) PATENT TERM ADJUSTMENT PENALTY: a significant strategic concern — RCEs toll patent term adjustment (PTA) accumulation; specifically, any days of applicant delay after the filing of the RCE are counted against the applicant in the PTA calculation; in a long-pending application, this can reduce the effective patent term; (2) COST: the RCE fee is not trivial, and prosecution continues to incur attorney fees; (3) DOES NOT CHANGE THE EXAMINER: unlike a continuation at a different technology center, an RCE keeps the same examiner; if the examiner is the core problem, an RCE may not resolve the deadlock; (4) PROSECUTION HISTORY ACCUMULATION: every argument made in an RCE becomes part of the prosecution history, potentially limiting claim scope through prosecution disclaimer; (5) MULTIPLE RCES: filing multiple RCEs significantly increases PTA penalty and total cost.

The choice between RCE, appeal, and continuation depends on the nature of the examiner's rejection, the art, and the business objectives: CHOOSE RCE WHEN: (1) the examiner has a legitimate point and the claims can be amended to overcome the rejection without undue loss of scope; (2) a better claim strategy or new arguments might persuade this examiner; (3) new prior art references need to be submitted in an IDS (you cannot submit an IDS after final without an RCE); (4) the prosecution history deadlock appears resolvable through an examiner interview; (5) PTA is not a major concern (short prosecution history already); CHOOSE APPEAL WHEN: (1) the examiner's rejection appears legally incorrect and the PTAB would likely reverse; (2) claim amendments would unacceptably narrow the claims; (3) a clear record exists for PTAB review (well-articulated arguments in the prior response); (4) the examiner is ignoring the applicant's arguments entirely — appealing 'forces' the examiner to respond through an examiner's answer; the threat of appeal sometimes causes examiners to allow or reopen prosecution; CHOOSE CONTINUATION WHEN: (1) you want different or broader claims that are not supported by the prosecution history of the parent; (2) you want a different examiner (different class/subclass); (3) you want to preserve continuity while prosecuting the parent separately; (4) there is business value in having multiple patents from the same specification; (5) PTA concerns are significant and the continuation gives a fresh term; COMBINATION STRATEGY: file both an appeal AND a continuation simultaneously — the continuation preserves the ability to pursue claims even if appeal fails; the continuation claims can be drafted differently to avoid the rejection.

Patent term adjustment (PTA) under 35 U.S.C. § 154(b) compensates for USPTO delays in prosecution, but contains provisions that penalize applicant behavior — including RCE filings: RCE AND PTA: under § 154(b)(2)(C)(i), the USPTO calculates 'applicant delay' — days for which the applicant is responsible for delaying prosecution; RCE FILING TRIGGERS: days after the filing date of an RCE are counted as applicant delay if the applicant could have responded to a final Office Action via appeal instead; specifically, the period between the close of prosecution and the RCE filing date is not PTA-negative per se, but the entire prosecution period after an RCE is subject to different PTA calculation; THE PTA TRAP: suppose prosecution has accumulated significant A-delay (USPTO took more than 14 months from filing to first Office Action) and the total PTA due before the RCE would be 400 days; after the RCE, new prosecution continues; any days of applicant delay (slow responses, abandonment, etc.) after the RCE reduce the accumulated PTA; MULTIPLE RCES MULTIPLY THE PROBLEM: each additional RCE resets certain PTA calculations and accumulates more time during which applicant delay can eat PTA; patent term can end up significantly shorter than the examiner's delays would otherwise warrant; STRATEGIC MITIGATION: (1) respond promptly to every Office Action after an RCE (before the 3-month deadline); (2) if the continuation is an option, consider whether a new application's PTA accrues better without the RCE baggage; (3) calculate the projected PTA before choosing RCE vs. appeal — the difference can be 1–2 years of effective patent term for valuable pharmaceutical or medical device patents.

An effective RCE submission should be designed to break the prosecution deadlock, not merely restart it: (1) EXAMINER INTERVIEW FIRST: if possible, conduct a telephonic or video examiner interview BEFORE filing the RCE; the interview reveals what claim language the examiner would actually allow; filing the RCE with claim amendments tailored to the examiner's feedback often results in a next allowance rather than another rejection; (2) CLEAN CLAIMS: present a clean, comprehensive claim set; address every outstanding rejection with specific amendments or arguments; don't carry over ambiguous claim language; (3) ARGUMENTS MUST ADDRESS THE REJECTION SPECIFICALLY: if the examiner rejected under § 103, don't repeat prior arguments verbatim — explain specifically why the prior art combination does not disclose or suggest every claimed element, with citation to the claims and prior art; (4) DECLARATIONS: if the examiner relied on an erroneous understanding of the art, a § 1.132 declaration from the inventor or an expert can rebut that understanding; (5) NEW PRIOR ART (IDS): if you know of additional prior art that distinguishes the claims, submit it in an IDS; this builds prosecution history establishing that the examiner considered and distinguished the art; (6) AFTER-FINAL PRACTICE FIRST: before committing to an RCE, consider whether the rejection can be overcome via an After-Final Amendment under 37 C.F.R. § 1.116 or the AFCP 2.0 program (After Final Consideration Pilot); AFCP allows applicants to submit amendments after final with a request for an examiner interview, without paying the full RCE fee; if the amendment places the application in condition for allowance, the examiner can allow it.