The US RCE (Request for Continued Examination): Recommendations
March 22, 2010
By Phil Summa

This is to provide a few practical thoughts on the United States’ Request for Continued Examination (RCE) procedure. Hopefully this will be helpful to practitioners
from other countries such as those practicing in the EPO or the Pacific Rim (e.g., Japan China Taiwan Australia Hong Kong).

In brief, the RCE is a procedure under which a US application under “final” rejection is returned to the Examiner in a fresh status i.e., the Examiner will treat the
RCE essentially as a new application and continue to evaluate the case on the merits. It thus forms a useful option to an appeal in many cases.

HISTORY

As partial historical background, a generation ago, a US Examiner was entitled to reject an application on one or more of a variety of grounds, and then return
the case to the Applicant. The Applicant could then address the single issue (or several) of rejection and return the case to the Examiner. This process could go
back and forth a number of times before the case was finally resolved.

In order to streamline this process, the USPTO initiated the “two-action” system; i.e., the goal is to require the Examiner to evaluate all of the possible grounds of
rejection in a first office action. The Applicant can then theoretically use a single response to address everything that is possibly objectionable. If the Applicant’s
response is insufficient, then the Examiner is entitled to issue a “final” office action. If the response to the final office fails to place the case in condition for allowance,
the case must be abandoned, re-filed, or appealed.

Because it is often hard for both an Examiner and an Applicant to identify and evaluate every possible issue in just two office actions, Applicants began using the
continuation (“continuing”) application procedure to re-file their cases in order to obtain (at least) two more office actions—and thus response possibilities—from
the Examiner.

In order to address the cumbersome effects of such filings, the USPTO established the RCE to provide a more streamlined option for the purpose of extending
prosecution in a case under final rejection.

RECOMMENDATIONS

If your application is under final rejection relatively early; i.e., the second office action overall; and if you believe that further amendments and discussions with the
Examiner will be fruitful, we recommend pursuing the RCE rather than a formal appeal. Alternatively, if after several office actions, potentially including an earlier
RCE, you believe that the issues are well developed and that you and the Examiner are at an impasse, we would recommend appeal.

Under US practice rules, if an Applicant receives a final rejection, the Applicant is entitled to file a response within two months of the mailing date of the final
rejection in order to require the Examiner to produce at least an “Advisory Action.” The Advisory Action informs the Applicant whether or not the claims will be
entered for purposes of appeal and may give a brief reason as to why the Examiner continues to reject the case.

The Examiner could also, of course, allow the case if the amendments and arguments were persuasive. If not, an Advisory Action often provides helpful guidance
for allowable subject matter or other prosecution efforts.