RCE: When Your Patent Needs a Second (or Third) Chance

Quick Summary

A Request for Continued Examination (RCE) is a mechanism that allows patent applicants to keep their application alive after a final rejection from the United States Patent and Trademark Office (USPTO). Instead of starting over with a new application, an RCE lets applicants submit new arguments, amendments, or evidence for reconsideration. While useful, RCEs come with additional delays, making it essential to understand when and how to use them strategically.

Common Questions & Answers

1. What is an RCE in patent prosecution?
An RCE is a formal request to the USPTO to continue the examination of a patent application after a final rejection, allowing applicants to amend claims or present new arguments.

2. When should I file an RCE?
An RCE is advisable when you have new evidence, wish to amend your claims, or believe that further dialogue with the examiner could lead to allowance.

3. How many rounds of examination do you get with an RCE?
With the initial application fees, you receive two rounds of examination. Each RCE grants you two additional rounds of examination before another final rejection can be issued.

4. How long does an RCE delay a patent?
Processing times vary, but an RCE can add several months to years to the examination process, depending on examiner workload and backlog.

5. Can I file multiple RCEs?
Yes, but excessive RCEs can signal weaknesses in the application and may not be the best strategy if rejection patterns persist.

Step-by-Step Guide to Filing an RCE

1. Evaluate Your Case – Determine whether an RCE is the best course of action based on the examiner's final rejection and your prosecution strategy.
2. Prepare Amendments or Arguments – Modify claims, provide new evidence, or refine legal arguments to address examiner concerns.
3. Complete USPTO Form PTO/SB/30 – This is the official RCE request form.
4. Pay the Required Fees – Submit the applicable RCE request.
5. File Electronically via EFS-Web – Submit the RCE through the USPTO’s electronic filing system.
6. Wait for Examiner’s Response – The examiner will either reopen prosecution or issue another rejection.

Historical Context

The concept of continued examination has evolved over time. Initially, applicants could file continuing applications (CIPs, Divisional Applications) to keep a patent alive. However, in 1999, the American Inventors Protection Act introduced RCEs to streamline the process. While intended to reduce backlog, RCEs have also become a significant revenue stream for the USPTO, leading some to question whether the system truly benefits inventors or simply prolongs the examination process.

Business Competition Examples

1. Apple Inc. – Known for extensive patent portfolios, Apple frequently files RCEs to refine claims and push through technology patents.
2. Tesla, Inc. – Uses RCEs strategically to protect innovations in battery tech and autonomous driving.
3. Pharmaceutical Industry – Companies like Pfizer and Moderna use RCEs to refine drug patents, ensuring stronger protection before commercialization.
4. Startup Innovations – Smaller tech startups often rely on RCEs when initial rejections arise due to unclear claims or prior art citations.

Discussion: When is an RCE a Smart Move?

An RCE can be a strategic tool, but it must be used wisely. If the examiner’s rejection is based on correct prior art citations, merely filing an RCE without substantial amendments may not be productive. On the other hand, if a rejection is based on interpretation issues or minor claim adjustments, an RCE can be a cost-effective way to achieve allowance. Applicants must balance persistence with practicality, ensuring that RCE filings are purposeful rather than desperate attempts to extend the process.

The Debate: Useful Mechanism or USPTO Cash Grab?

Pro-RCE: Supporters argue that RCEs allow applicants a fair chance to refine and clarify their claims without restarting the entire application process. This saves time and preserves priority dates.

Anti-RCE: Critics claim that the USPTO benefits financially from RCEs, encouraging examiners to reject applications initially, forcing applicants to pay additional fees for continued review.

Key Takeaways

• RCEs provide a second chance to argue a patent case after a final rejection.
• They can delay patent issuance but also keep applications alive for further prosecution.
• Each RCE grants two additional rounds of examination before another final rejection can be issued.
• Strategic use of RCEs can lead to successful prosecution, but excessive filings can be costly and unproductive.

Potential Business Hazards

1. Increased Costs – Filing multiple RCEs can accumulate significant expenses.
2. Delays in Patent Issuance – Extending the examination process can delay commercialization and enforcement.
3. Weakening of Patent Claims – Repeated amendments can narrow claims, making patents easier to design around.
4. Signaling Weakness to Competitors – A long prosecution history may indicate vulnerabilities in an invention’s patentability.

Myths & Misconceptions

• “An RCE guarantees a patent.” – It only continues the process but does not ensure allowance.
• “Filing an RCE means starting over.” – No, it keeps the same application number and maintains priority.
• “Only big companies use RCEs.” – Startups and individual inventors file RCEs regularly.
• “RCEs are a sign of failure.” – Many successful patents undergo RCEs as part of standard prosecution.

Book & Podcast Recommendations

1. "Patent It Yourself" by David Pressman – Great for understanding prosecution strategies. Amazon Link
2. "Patent Pending in 24 Hours" by Richard Stim & David Pressman – Guide to fast-tracking patents. Amazon Link
3. "Understanding Patents" (Podcast by Intellectual Property Watch) – Covers global patent strategies. Podcast Link

Legal Cases

1. Hyatt v. USPTO (2012) – Examined limits on continued prosecution and RCE filings. Case Summary
2. KSR Int’l Co. v. Teleflex Inc. (2007) – Addressed obviousness in patent prosecution. Case Summary
3. Ex Parte Reexamination Case (Generic Pharma) – Impact of RCEs on pharmaceutical patents. Case Summary

Expert Invitation

Have experience with RCEs? Share your thoughts! Join the discussion at InventiveUnicorn.com and connect with fellow innovators.

Wrap-Up Conclusion

An RCE can be a powerful tool for continuing patent prosecution, but it must be used strategically. Whether you're an inventor, entrepreneur, or patent attorney, understanding the nuances of RCEs will help you navigate the complex world of intellectual property with confidence.