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:

1. Wait for the examiner to issue a new Office action after the RCE is filed
2. If the new Office action is a final rejection, file a new Notice of Appeal
3. Prepare and file a new appeal brief within the prescribed time limit

The MPEP clarifies: “If an RCE is filed in an application prior to the filing of an appeal brief, the RCE is treated as a withdrawal of the appeal.” This means that the applicant cannot simply continue with the previous appeal process but must initiate a new appeal if they disagree with the examiner’s decision following the RCE.

It’s important to note that the applicant should not file a Notice of Appeal immediately after an RCE without waiting for a new Office action, as this would be considered defective.

To learn more:

• RCE
• Appeal Procedure
• Notice of Appeal
• Patent Prosecution