Request for Continued Examination: What is It?

Requests for Continued Examination (RCE) is a part of how to patent an idea and asks a patent examiner to review a patent application after the inventor has made necessary changes to an original application. It's one of the last steps in the patent application process.

When you file a patent application, you have two main chances for approval. If you receive a rejection the first time, you can fix the problems and send your application back. A second rejection is the Final Office Action.

To continue the patent application case, you might have to file an RCE. This reopens your case and allows the examination to continue.

After you file an RCE, the patent examiner might allow continued examination. Rather than granting an application, the examiner might issue an Office Action.

Reasons to Consider Filing a Request for Continued Examination

  • You've never received a final office action before

If your patent application record is pretty clean, applying for an RCE could be a smart choice. This is especially true if you want to make the amendments or arguments your patent examiner recommended.

  • You could save valuable time

If you need a patent now, you can't afford to waste time. Filing an RCE lets you save your original place in line. Starting the application process over with a new patent will push you to the back of the line.

  • You need to buy time

Filing a patent application includes a lot of back and forth with the patent officer. To get it approved, you might have to make major edits to your claims or description. Just because the patent examiner is ready to approve your patent doesn't mean you have to allow it, though. If you need more time to make sure the patent is sufficient, consider filing an RCE. Doing this keeps the application active while buying some time.

Reasons to Consider Not Using a Request for Continued Examination

  • It isn't always necessary

A Final Office Action doesn't always close your case. You might not need an RCE to move forward. If you need to make minor changes to your patent application, an after-final response might be more effective.

  • It might not be an option

You can apply for RCEs for utility patent applications but not design patent applications. RCEs also don't apply to provisional patent applications.

  • You've already filed a request for continued examination

You can usually file several RCEs per application, but in some cases, additional RCEs might not help. Talk to the patent examiner to learn if this is a good idea.

Deadline

You must file an RCE before your patent application is considered abandoned. Note the deadlines on any correspondence from your patent examiner. If you don't reply in time, you might accidentally abandon your application and limit your options.

You must also to file an RCE before a notice of appeal is filed with the U.S. Court of Appeals for the Federal Circult or before a civil action begins.

Common Mistakes

  • Not addressing amendments sooner

Many applicants run into problems with patent descriptions and claims. Take the time to argue and amend these as early as possible. This will help prevent delays and could even prevent you from having to file an RCE.

  • Not considering your other options

An RCE isn't your only option to get a patent application approved. You might need to file an appeal or even start a new application. Talk with your patent examiner and your attorney. They'll help you decide on the right course of action.

  • Not weighing your costs

Filing an RCE is expensive. It costs even more if you have to file multiple RCEs or if you need to speed up the process. Consider whether filing a new application would be better for your bottom line.

Frequently Asked Questions

  • How Many Requests for Continued Examination Can You File?

There is no cap on how many RCEs you can file. If you aren't making progress on an application, though, you might consider another option.

  • How Long Does it Take to Grant a Request for Continued Examination?

In the past, examiners would respond to RCEs within two months. Now, the process takes much longer -- up to three years. Patent examiners no longer have a deadline to respond. This is due to the large number of RCEs submitted.

  • Can You Expedite a Request for Continued Examination?

A Track One Prioritized Examination option is available for some applicants. Keep in mind this costs an extra fee.

  • Does a Request for Continued Examination Affect the Patent Term?

Utility patent terms last for 20 years. If your application is stuck in the approval process, though, you might wonder if you can make up for the lost time. A Patent Term Adjustment (PTA) extends the term accordingly. Filing an RCE often leads to a PTA.

  • How Much Does a Request for Continued Examination Cost?

Check the USPTO fee schedule to find out how much an RCE costs.

 

Large Business Fee

Small Business Fee

Individual Fee

First Request for Continued Examination

$1,200

$600

$300

Second Request for Continued Examination

$1,700

$850

$425

Request for Prioritized Examination

$4,000

$2,000

$1,000


Steps to File a Request for Continued Examination

1.     File a Request for Continued Examination Transmittal
2.     Submit Correct Fees
3.     Await a Response From Your Patent Examiner

Official responses typically include the following:

  • Continued Prosecution Application Treated as Continued Examination
  • Continued Examination After Final Rejection
  • Request for Continued Examination With Submission Filed Which is Not Fully Responsive
  • Action is Final, First Action Following Request for Continued Examination
  • Continued Examination After Allowance or Quayle Action
  • Continued Examination After Appeal but Before a Board Decision
  • Application on Appeal, Request for Continued Examination Without Submission or Fee; No Claims Allowed
  • Application on Appeal, Request for Continued Examination Without Submission; Claim Allowed
  • Application on Appeal, Request for Continued Examination Without Submission; Claim Allowed With Formal Matters Outstanding
  • Application on Appeal, Request for Continued Examination Without Fee; Claim Allowed
  • Application on Appeal, Request for Continued Examination Without Fee; Claim Allowed With Formal Matters Outstanding
  • Continued Examination After Board Decision but Before Further Appeal or Civil Action
  • After Board Decision but Before Further Appeal or Civil Action, Request for Continued Examination Without Submission or Fee

If you need help filing a request for continued examination, you can post your question or concern on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Stripe, and Twilio.