What is the proper procedure if an applicant wants to appeal after filing an RCE?
If an applicant wants to appeal after filing a Request for Continued Examination (RCE), they must follow a specific procedure. According to MPEP 1204.01, the proper steps are: Wait for the examiner to issue a new Office action after the RCE is filed If the new Office action is a final rejection, file a new…
Read MoreHow does the USPTO handle amendments that require additional searching after allowance?
How does the USPTO handle amendments that require additional searching after allowance? When an amendment after allowance requires additional searching, the USPTO typically withdraws the application from issue. The MPEP 1303.01 provides guidance on this: “Where an amendment requires further searching and consideration by the examiner, the amendment will be treated as an after final…
Read MoreWhat happens if I file an amendment after the period for reply has expired?
If you file an amendment after the period for reply has expired, it will generally not be entered. According to MPEP 714.17: An amendment filed after the expiration of the statutory period for reply to an Office action cannot be entered. The applicant may file a continuing application or request for continued examination (RCE) (if…
Read MoreHow can an applicant respond to a final rejection in a patent application?
How can an applicant respond to a final rejection in a patent application? When faced with a final rejection, an applicant has several options to respond: File an appeal: Challenge the examiner’s decision before the Patent Trial and Appeal Board. File a request for continued examination (RCE): Pay a fee to continue prosecution with the…
Read MoreHow do I request prioritized examination for a request for continued examination (PE-RCE)?
To request prioritized examination for an RCE (PE-RCE), the following conditions must be met: The application must be a non-reissue utility or plant nonprovisional application The publication fee must be paid The PE-RCE request must be filed before the first Office action after filing the RCE Only one PE-RCE request may be granted per application…
Read MoreCan a first Office action be made final after filing a Request for Continued Examination (RCE)?
Yes, a first Office action can be made final after filing a Request for Continued Examination (RCE) under certain conditions. According to MPEP 706.07(b): “The claims of an application for which a request for continued examination (RCE) has been filed may be finally rejected in the action immediately subsequent to the filing of the RCE…
Read MoreWhat is the difference between a continuing application and an RCE when dealing with a late amendment?
When dealing with a late amendment, both continuing applications and Requests for Continued Examination (RCE) can be used, but they have different implications: Continuing Application: Starts a new application with a new filing date Allows for changes to the specification and claims May be subject to intervening prior art Useful for significant changes or new…
Read MoreWhen can an examiner make a first action final rejection in patent examination?
An examiner can make a first action final rejection in specific circumstances, as outlined in MPEP 706.07(b). The main situations where this is permissible include: When all claims are drawn to the same invention claimed in an earlier application, and would have been properly finally rejected in the earlier application. In the case of a…
Read MoreHow does a suspension of action affect continued prosecution applications (CPAs) or requests for continued examination (RCEs)?
Applicants can request a suspension of action for continued prosecution applications (CPAs) or requests for continued examination (RCEs) under specific conditions. According to MPEP 709, “Applicants may request a suspension of action by the Office under 37 CFR 1.103(b) or (c) for a period not exceeding three months in a continued prosecution application (CPA) filed…
Read MoreCan a suspension of action be requested after a final Office action?
Can a suspension of action be requested after a final Office action? Generally, a suspension of action is not granted after a final Office action. According to MPEP 709: “A request for suspension of action to provide time for consideration of an amendment after a final Office action will be denied.” However, there are exceptions:…
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