An Analysis of the New Rules: 37 C.F.R. § 1.114: RCE Practice

    By Donald Zuhn --

On August 21, 2007, the U.S. Patent and Trademark Office published new rules concerning continuation and claims practice that will undoubtedly have a profound effect on the way patent attorneys and agents prosecute applications before the Patent Office.  In view of the 128-page Federal Register notice regarding the new rules, the Patent Office's nearly two hour webcast on August 23, 2007 (and the webcast's accompanying 109-page presentation), and the Office's 45-page list of Frequently Asked Questions, Patent Docs believes it may be helpful to examine the rules piece-by-piece in an attempt to identify areas where patent attorneys and agents will need to modify their patent prosecution practice.

37 C.F.R. § 1.114:

Under revised 37 C.F.R. § 1.114, an applicant will be allowed to file only a single request for continued examination (RCE) without a petition and showing in a single application family.  The Patent Office defines an application family as including an initial application and its continuation or continuation-in-part applications.  The requirements of revised Rule 114, when coupled with the requirements of Rule 78(d)(1) (which were discussed in an earlier article in this series), create a "2 + 1" rule that allows an applicant to file only two continuation or continuation-in-part applications and only one RCE per application family without any justification.  As with Rule 78(d)(1)(vi), an applicant may exceed the one RCE limit of Rule 114 by filing a petition, fee, and showing that an amendment, argument, or evidence sought to be entered with the RCE could not have been submitted earlier in prosecution.

Compared with the prior version of the rule, under revised Rule 114(a), an applicant's right to file an RCE is severely restricted.  In particular, if an applicant fails to satisfy the conditions of § 1.114(f)(1)-(3), an RCE must be accompanied by a petition under § 1.114(g).

New Rule 114(f) - the prior version of § 1.114 contained only five subparts - provides the conditions under which an applicant may file an RCE without a petition under § 1.114(g).  Rule 114(f)(1) allows an applicant to file an RCE without a petition under § 1.114(g) provided that an RCE has not been previously filed in (1) that application, (2) a prior-filed application whose benefit is claimed in that application, or (3) an application that claims the benefit of that application (excluding applications that satisfy the provisions of Rule 78(d)(1)(ii)-(iv)).  In other words, Rule 114(f)(1) allows an applicant to file a single RCE in either an initial application or its continuation applications without a petition under § 1.114(g).

Rules 114(f)(2) and (f)(3) allow an applicant to file an RCE without a petition under § 1.114(g) in a divisional application (or one of its continuations) provided that an RCE has not been previously filed in (1) that divisional application, (2) a continuation of that divisional application, or (3) an application that claims the benefit of that divisional application (excluding applications that satisfy the provisions of Rule 78(d)(1)(ii)-(iv)).  In other words, Rules 114(f)(2) and (f)(3) allow an applicant to file a single RCE in a divisional or its continuations without a petition under § 1.114(g).

When an applicant is unable to satisfy the conditions of § 1.114(f)(1)-(3), new Rule 114(g) allows the applicant to file an additional RCE provided that the applicant also files a petition, fee, and showing that an amendment, argument, or evidence sought to be entered with the RCE could not have been submitted earlier in prosecution.  According to the Patent Office's final rule notice, a petition under § 1.114(g) including only an information disclosure statement as the submission required under § 1.114(c) would not be granted because the IDS would not constitute "[an] amendment, argument, or evidence."

As described in the Patent Office's new rules FAQ (see Question E6), the PTO will determine on a case-by-case basis whether an applicant's showing is satisfactory.  Factors that the Patent Office will consider when deciding whether to grant a petition include: (1) whether an applicant should instead file an appeal or petition to withdraw the finality of an Office action, (2) the number of other filed applications having substantially identical disclosures, and (3) whether the showing was submitted with reasonable diligence.  The PTO warns, however, that "[a]pplicants should not rely upon the availability of additional continuing applications or RCEs in prosecuting an application."

New Rule 114(h) provides that the filing of an improper RCE - including an RCE with a petition under § 1.114(g) that is not grantable - will not stay any period for reply.

The changes to § 1.114 apply to any application in which an RCE is filed on or after November 1, 2007.  According to the final rule notice, therefore:

a petition under 37 CFR 1.114(g) must accompany any request for continued examination filed on or after November 1, 2007, in an application in which a request for continued examination has previously been filed, or in a continuation application or continuation-in-part application of an application in which a request for continued examination has previously been filed, or in an application whose benefit is claimed in a continuation application or continuation-in-part application in which a request for continued examination has previously been filed.

Thus, in those situations where an RCE has not yet been filed in an application family, an applicant would be wise not to try to squeeze in a "freebie" before November 1, 2007, since such an RCE filing would eliminate the possibility of filing an RCE after November 1, 2007 (i.e., under the new rules there are no freebies).

For additional articles in this series, please see:

• "An Analysis of the New Rules: 37 C.F.R. § 1.75(b): 5/25 Limit on Claims," September 4, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.78(d)(1): Claims for Benefit of Prior-Filed Applications," September 3, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.78(f): Commonly Owned Applications and Patents," August 27, 2007

For additional information on this and other related topics, please see:

• "Inventor Sues PTO to Prevent New Continuation Rules from Taking Effect," August 30, 2007
• "Patent Office Provides Recorded Web-Based Discussion of New Rules," August 30, 2007
• "New PTO Continuation Rules: Unfair to Biotech?" August 29, 2007
• "Proposed Agenda for September 12, 2007 Biotechnology/ Chemical/Pharmaceutical Art Group Meeting," August 24, 2007
• "The 'Word' on the New Continuation Rules (from the USPTO Webcast) - Part II," August 24, 2007
• "The 'Word' on the New Continuation Rules (from the USPTO Webcast) - Part I," August 23, 2007
• "New Continuation and Claims Rules Published," August 22, 2007
• "More on M.P.E.P. § 710.06," August 20, 2007
• "Patent Office to Hold Webcast on New Claim and Continuation Rules on August 23, 2007," August 20, 2007
• "Patent Office Announces that New Continuation and Claims Rules Will Be Published . . . Tomorrow," August 20, 2007
• "Procuring Patent Protection from the Present USPTO," August 15, 2007
• "New Continuation and Claims Rules to Be Published in Late Summer," July 25, 2007
• "They Just Don't Get It - 'Patent Reform' at the USPTO," April 11, 2007
• "Patent Applicants Beware: The Rules Are Changing (Again)" Part 1 and Part 2, November 6, 2006

Changes to Rule 114:

(a) If prosecution in an application is closed, an applicant may, subject to the conditions of this section, file a request for continued examination of the application accompanied by a submission, the fee set forth in § 1.17(e), and if required, a petition under paragraph (g) of this section accompanied by the fee set forth in § 1.17(f), prior to the earliest of:

(1) Payment of the issue fee, unless a petition under § 1.313 is granted;
(2) Abandonment of the application; or
(3) The filing of a notice of appeal to the U.S. Court of Appeals for the Federal Circuit under 35 U.S.C. 141, or the commencement of a civil action under 35 U.S.C. 145 or 146, unless the appeal or civil action is terminated.

* * *

(d) If an applicant files a request for continued examination under this section after appeal, but prior to a decision on the appeal, the request for continued examination will also be treated as a request to withdraw the appeal and to reopen prosecution of the application before the examiner. An appeal brief (§ 41.37 of this title), a reply brief (§ 41.41 of this title), or related papers will not be considered a submission under this section.

* * *

(f) An applicant may file a request for continued examination under this section in an application without a petition under paragraph (g) of this section if the conditions set forth in at least one of paragraphs (f)(1), (f)(2), or (f)(3) of this section are satisfied:

(1) A request for continued examination under this section has not previously been filed in any of:

(i) The application;
(ii) Any application whose benefit is claimed under 35 U.S.C. 120, 121, or 365(c) in such application; and
(iii) Any application that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of such application, not including any nonprovisional application that satisfies the conditions set forth in § 1.78(d)(1)(ii), (d)(1)(iii) or (d)(1)(vi).

(2) The application is a divisional application that satisfies the conditions set forth in § 1.78(d)(1)(ii), and a request for continued examination under this section has not previously been filed in any of:

(i) The divisional application; and
(ii) Any application that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of such divisional application, not including any nonprovisional application that satisfies the conditions set forth in § 1.78(d)(1)(ii), (d)(1)(iii) or (d)(1)(vi).

(3) The application is a continuation application that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of a divisional application and satisfies the conditions set forth in § 1.78(d)(1)(iii), and a request for continued examination under this section has not been filed in any of:

(i) The continuation application;
(ii) The divisional application; and
(iii) Any other application that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of such divisional application, not including any nonprovisional application that satisfies the conditions set forth in § 1.78(d)(1)(ii), (d)(1)(iii) or (d)(1)(vi).

(g) A request for continued examination must include a petition accompanied by the fee set forth in § 1.17(f) and a showing that the amendment, argument, or evidence sought to be entered could not have been submitted prior to the close of prosecution in the application, except as otherwise provided in paragraph (f) of this section.
(h) The filing of an improper request for continued examination, including a request for continued examination with a petition under paragraph (g) of this section that is not grantable, will not stay any period for reply that may be running against the application, nor act as a stay of other proceedings.

Comments

[NIPRA anonymous]

For a preliminary analysis of how a single application family may *not* in fact be limited to "a single request for continued examination (RCE) without a petition and showing", please see:

http://www.nipra.org/rce114.html

[NIPRA anonymous]

NIPRA has a new preliminary analysis on the possibility of obtaining extra RCEs in divisional families under 37 CFR 1.114(f)(3) (similar in some respects to our earlier analysis describing the possibility of obtaining two RCEs from parallel continuations). Comments, especially from those who feel comfortable sifting though the rules, would be *very* much appreciated before we make this page final. Thank you.

http://www.nipra.org/div-rce.html