Request for continued examination (RCE)

An RCE is available only when prosecution is closed. Under 37 CFR 1.114(b), that means 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 prosecution². The MPEP says an applicant cannot request continued examination until prosecution is closed³.

The request must be filed before the earliest of: payment of the issue fee, unless a petition under 37 CFR 1.313 is granted; abandonment of the application; or the filing of a notice of appeal to 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 (37 CFR 1.114(a))².

What it must include. A submission and the fee set forth in 37 CFR 1.17(e). A submission 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 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 (37 CFR 1.114(c))². So after a final rejection, a submission consisting only of an information disclosure statement is not enough³. An appeal brief or reply brief, or related papers, is not a submission, but the MPEP says a submission may consist of the arguments in a previously filed appeal brief or reply brief, or of a statement incorporating them by reference^2,3. An RCE filed after appeal but before a decision on the appeal is treated as a request to withdraw the appeal and reopen prosecution before the examiner (37 CFR 1.114(d))².

• Applications outside the rule. The RCE provisions do not apply to a provisional application, a design patent application, an international design application, a patent under reexamination, certain applications filed before June 8, 1995, or an international application that does not comply with 35 U.S.C. 371 (37 CFR 1.114(e))².
• Design applications. The MPEP says RCE practice does not apply to design applications. Effective July 14, 2003, a continued prosecution application (CPA) under 37 CFR 1.53(d) may only be filed if the prior nonprovisional application is a design application³.
• Switching inventions. An applicant cannot file an RCE to obtain continued examination on the basis of claims independent and distinct from the claims previously claimed and examined as a matter of right. Newly submitted claims to such an invention are withdrawn from consideration and not entered³.
• Becoming a new application. An RCE is not the filing of a new application, so the Office will not convert an RCE to a new application such as one filed under 37 CFR 1.53(b), or to a CPA³.
• National stage applications. For an effective RCE in a 35 U.S.C. 371 national stage application, all required inventor's oaths or declarations, or substitute statements, must be submitted before or with the RCE³.

Under 35 U.S.C. 154(b)(1)(B), if issue of an original patent is delayed because the USPTO fails to issue it within 3 years after the actual filing date (or, for an international application, the commencement of the national stage), the term is extended 1 day for each day after the end of that 3-year period until the patent issues. The statute excludes from that calculation any time consumed by continued examination of the application requested by the applicant under 35 U.S.C. 132(b)⁴.

So time spent in continued examination after an RCE does not count toward that 3-year guarantee⁴. Other rules also limit adjustment: where periods of delay overlap, the adjustment cannot exceed the actual number of days issuance was delayed (35 U.S.C. 154(b)(2)(A)), and the adjustment is reduced by any period in which the applicant failed to engage in reasonable efforts to conclude prosecution (35 U.S.C. 154(b)(2)(C)(i))⁴. Filing an RCE after a notice of allowance has been mailed also reduces any adjustment, by the days from the day after the date of mailing of the notice of allowance to the date the request was filed (37 CFR 1.704(c)(12))⁶. This page does not cover the other grounds for adjustment. See Patent term adjustment.