Can a patent owner file a request for continued examination (RCE) in ex parte reexamination?
No, a patent owner cannot file a request for continued examination (RCE) in ex parte reexamination. This is explicitly stated in MPEP ยง 2271: “Both the patent owner and the examiner should recognize that a reexamination proceeding may result in the final cancellation of claims from the patent and that the patent owner does not…
Read MoreWhat is the impact of filing a Request for Continued Examination (RCE) on patent term adjustment?
Filing a Request for Continued Examination (RCE) after a notice of allowance has been mailed can result in a reduction of patent term adjustment. According to 37 CFR 1.704(c)(12): “Submission of a request for continued examination under 35 U.S.C. 132(b) after any notice of allowance under 35 U.S.C. 151 has been mailed as constituting a…
Read MoreDoes filing a request for continued examination (RCE) change the applicable patent laws?
No, filing a request for continued examination (RCE) does not change the applicable patent laws for an application. The MPEP 2159.01 clearly states: “Note that neither the filing of a request for continued examination, nor entry into the national stage under 35 U.S.C. 371, constitutes the filing of a new application. Accordingly, even if a…
Read MoreDoes filing a request for continued examination (RCE) change an application’s status under pre-AIA or AIA rules?
No, filing a request for continued examination (RCE) does not change an application’s status under pre-AIA or AIA rules. The MPEP clearly states: Accordingly, such an application remains subject to pre-AIA 35 U.S.C. 102 and 103 even if a request for continued examination under 37 CFR 1.114 is filed on or after March 16, 2013,…
Read MoreWhat happens if a patent owner files a request for continued examination (RCE) in a merged proceeding?
When a patent owner files a request for continued examination (RCE) in a merged reissue and reexamination proceeding, it has significant consequences. The MPEP states: If applicant/patent owner files a request for continued examination (RCE) of the reissue application under 37 CFR 1.114 (which may be filed on or after May 29, 2000 for an…
Read MoreDoes filing a request for continued examination (RCE) affect the application of AIA provisions?
No, filing a request for continued examination (RCE) does not affect the application of AIA provisions. The MPEP clearly states: “Note that neither the filing of a request for continued examination, nor entry into the national stage under 35 U.S.C. 371, constitutes the filing of a new application.” This means that even if you file…
Read MoreCan an applicant file a Request for Continued Examination (RCE) to switch inventions?
No, an applicant cannot use a Request for Continued Examination (RCE) to switch inventions as a matter of right. The MPEP 819 clearly states: “In addition, the applicant cannot, as a matter of right, file a request for continued examination (RCE) on claims that are independent and distinct from the claims previously claimed and examined…
Read MoreDoes filing a Request for Continued Examination (RCE) affect the determination of the elected invention?
No, filing a Request for Continued Examination (RCE) does not change the determination of the elected invention. According to MPEP 818.02(a): “The claims originally presented and acted upon by the Office on their merits determine the invention elected by an applicant in the application, and in any request for continued examination (RCE) filed for the…
Read MoreWhat happens to the publication fee if I file a Request for Continued Examination (RCE) after receiving a Notice of Allowance?
If you file a Request for Continued Examination (RCE) after receiving a Notice of Allowance but before the three-month payment period expires, the due date for the publication fee will be suspended. The MPEP states: “If applicant files a request for continued examination (RCE) under 37 CFR 1.114 after a Notice of Allowance and Fee(s)…
Read MoreWhat options are available if an appeal is dismissed but the application is not abandoned?
If an appeal is dismissed but the application is not abandoned (due to at least one allowed claim), the applicant has several options. According to MPEP 1205.01: “If the appeal is dismissed, but the application is not abandoned because there is at least one allowed claim, the applicant may file a petition to reinstate the…
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