What is an RCE?
We wanted to talk a little bit about RCEs. In a previous blog post
you mention things that could happen after a final office action. Now is that what the RCE is and what is the RCE just generally?
Chris: So the RCE is the abbreviation for Request for Continued Examination
. An RCE is a filing, along with a fee, to advance prosecution after the mailing of an Advisory Action or a Final Office Action.
There are several options you have after receiving a Final Office Action. An RCE is one of those options.
Listen to the podcast.
Interview with Chris Maiorana by Eric Decker; recorded in 2019.
So the RCE is how you resurrect (twice rejected claims). You had a Final and now you don't have a final. Does the USPTO take every RCE or is it done on a case by case basis?
Chris: The key with an RCE is that there is a fee attached to the RCE. An RCE is a mechanism for the Patent Office to get more funding. So if you send the Patent Office money, they tend to enter those things. That is the general rule. The Patent Examiner gets counts for examining a patent application.
He gets one count for sending his initial Office Action. Then he gets a second count for wrapping up the Office Action, which he can do by either sending a Final or sending an Allowance.
We hope that he allows the case, and most of our cases do get allowed, but if he sends a Final, then we just have to repeat the process again (the overall process is discussed here)
So as part of the USPTO RCE requirements, you pay a fee to get the Examiner to do his initial examination. That is all you paid for at the time. So filing a USPTO RCE form is a second pass through where you pay the Patent Office more money to look at it a second time.
So that is how they make sure that people aren’t filing unnecessary RCEs, people aren’t gaming the system, is it because of the fee schedule or is it something else?
Chris: The patent RCE fee is a big part of it. So there are two components there. On the one had Patent Examiners always like to get more counts. So if they get you to file an RCE, they get their second count for the first case and they get a new count for the second case.
That is the continued examination part of the RCE.
So the Examiners love to get more counts, but the high up people at the Patent Office as a matter of policy don’t want patents to be pending for a long time. They want to get things to issue. So that is why if you look at the fee schedule, there is an increased fee for the second and subsequent RCE that is filed. So they make it even more financially punishing to continue.
Is the RCE itself is that something that is considered controversial. Is that something that a lot of people look at and say hey these things shouldn’t exist, do they create a giant backlog, is there a controversy surrounding that or is there not.
Chris: The RCEs are fairly clean. If you look at our other podcasts that talk about what is a submarine patent.
That is a bit more controversial where people want to keep things pending for a long, long time at the Patent Office and then change the claims to attack a new found potential victim of their submarine patents.
The RCEs are part of that because they do keep things going, but more than likely in a submarine patent situation, you would use a
continuation application, discussed here.
What are the other options? What are the other scenarios that would warrant the filing of an RCE?
Chris: An RCE is used when we amend the claims after final. If you remember back when we first talked about responses to a Final Office Action
, you get one chance to amend the claims as a matter of right. So we typically do that in our Non-Final Response.
But if the Examiner is not persuaded, or if he comes up with new art, and we just need to amend the claims again, then the RCE is the mechanism for getting those claims entered.
These procedures are called patent prosecutions, right?
Chris: So each case that is pending with the Patent Office is a patent application. So we say “patent prosecution” as just the general type of law that we practice. We are dealing with the Patent Office (USPTO). So our job is to get a patent to issue from the United States Patent Office.
The other flavor of Patent Law is litigation, where patent litigators enforce claims in Court. Our practice is to get claims to issue from the Patent Office, which is usually called patent prosecution.
It seems that there are a lot of times when you are going through these procedures, then the Patent Office will come back and give you something that is called a Final (or a Final Office Action).
Are any of those things actually final or is that just a suggestion?
Chris: A final means that you have used your one chance to amend the claims. You do not get another chance as a matter of right. But a Final Office Action is never final. An RCE is a mechanism for getting those claim amendments entered.
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