Should I File a Request for Continued Examination for My Patent Application? Episode 62

(This episode first aired in 2019. Some details, like costs, may have changed.)

What Is a Request for Continued Examination (RCE)?

In the last episode, I talked about eight options for what to do if you receive a final rejection. In this episode, I’m going to focus on one of those options, called a Request for Continued Examination (RCE). Remember that a final office action does not mean your options for getting a patent are over. The Patent Office may call it "final," but as in The Princess Bride, I do not think it means what you think it means.

Final doesn’t mean final. In this case, filing an RCE simply means that the Patent Office wants more money from you.

How Much Does an RCE Cost?

The cost of an RCE depends on your entity size and whether it is your first or subsequent request:

• First RCE: $1,300 for large businesses, $650 for small businesses, and $325 for micro-entities (usually individual inventors with low income).

• Second or subsequent RCEs: $1,900 for large businesses, $950 for small businesses, and $475 for micro-entities.

If you file more than two RCEs, the fee remains the same as the second RCE fee. However, always check the USPTO website for the latest fee schedule.

Deadlines for Filing an RCE

When you receive your final office action, you will see a deadline for responding. Typically, you have three months to respond without additional fees. However, you can extend the deadline by up to three months by paying extension fees:

• Fees range from $50 for a micro-entity for a one-month extension to $1,400 for a large entity for a three-month extension.

• If you miss these deadlines, your application goes abandoned. You can revive it for an additional fee, but avoiding abandonment is best.

How to File a Request for Continued Examination

There is an official USPTO form, PTO/SB/30, which you can find on the Patent Office website. This form allows you to check boxes indicating what documents you are submitting and what fees you are paying. However, I have not found that it is strictly required.

When you upload your response to the USPTO, you can select that your response is a Request for Continued Examination. The rest of your response should be formatted like a response to a non-final office action.

Responding to the Examiner’s Rejections

You must address all issues raised by the examiner in the final office action. For example:

• If you previously amended claims and the examiner still rejected them, you need to either amend them again or argue why they should be allowed.

• If you did not amend the claims, you can still argue that the examiner’s rejection was incorrect, but simply repeating previous arguments without modification is unlikely to be successful.

There is no magic formula for securing an allowance. The strategy depends on the specific facts of your invention and the prior art the examiner is using to reject your claims.

Timing and Next Steps

Once you submit an RCE, it usually takes at least a couple of months before the examiner reviews it and issues another office action. Generally, after an RCE, the next office action is non-final, meaning you get another opportunity to respond. However, in some cases—especially if you have not introduced new arguments or amendments—the examiner may issue another final office action, forcing you to reconsider your options.

Ideally, after filing an RCE, the next response from the Patent Office is an allowance.

How Often Are RCEs Filed?

On average, it takes more than two office actions for a patent to be allowed. This means that in most cases, an RCE is filed before an allowance is granted. Many factors affect this, including:

• The art group examining the application

• The specific examiner assigned

• Whether you conducted an interview with the examiner

If you receive a final rejection, this is a normal part of the process. It does not mean your invention is not patentable—it is just part of the typical patent prosecution process.

Final Thoughts

There are strategies to reduce the likelihood of rejection, which I will discuss in future episodes. For now, we have covered the basics of filing a Request for Continued Examination (RCE). I'm Adam Diament, and until next time, keep on inventing!