RCE and CPA

December 12, 2001
HARAKENZO World Patent & Trademark
(Takamasa ARAI)

On November 29, 1999, a revised law of US patent was enacted. Under the revised law, a new practice called RCE (Request for Continued Examination) has been introduced. According to the RCE practice, the applicant no longer has to re-file the application to request Continued Examination. CPA (Continued Prosecution Application) practice will be abolished and centralized to the RCE practice in the near future. Please refer to the following explanations regarding these practices as a guide of procedure.

RCE practice
1. Patent
Applications for the RCE practice
The RCE practice is applied to a patent application which satisfies the following.
(a) The actual filing date is after June 8, 1995 (this is not the effective filling date, including US national phase entry of PCT applications)
(b) After issuing FOA, or "Notice of Allowance" (Prosecution is closed)
(c) Before the payment of Issue fee

2. Application of the provision of PTA (guarantee for the term of patent right)
2-1) In the case where the application is filed before May 29, 2000
When RCE practice is applied to on a patent application filed before May 29, 2000, the provision of PTA (Patent Term Adjustment; 35 USC ˜154(1)(A) and 35 USC ˜154(1)(B)) will not be applied.
This is because the provision of PTA is only applied for a patent application whose actual filing date is after May 29, 2000.

2-2) In the case where the application is filed after May 29, 2000
When RCE practice is applied to an application filed after May 29, 2000, the time spent for the RCE practice is not included in the "Three years" in the rule providing "PTA is applied in the case where the application is not granted as a patent within three years due to a reason USPTO is responsible" (35 USC ˜154(1)(B)).
However, the provision of PTA can be applied in the case where the application is not granted due to the following reasons (1) through (4).
(1) When it takes more than 14 months to issue the first OA after the patent application is filed.
(2) When it takes more than 4 months to issue the next OA after a response to an OA is filled.
(3) When it takes more than 4 months to remand to the USPTO after trial decision or judgment is made.
(4) When it takes more than 4 months to issue as a patent after the payment of Issue fee is made.
According to the RCE practice, as to delays, to which the USPTO is responsible, it is possible to succeed to all of PTA accumulated until the filing date of RCE.

3. Advantages and disadvantages of RCE
3-1) Since it is not legally concerned as a new patent application, additional fee is not required as long as the additional claims fee has been paid for the already added claims during the prior examination. When the number of the independent claims is three, and total claim number is within twenty, additional fee is surely not required; however, only exception is basic filing fee.
3-2) Since the RCE practice is for the same invention, it is not possible to take the procedure with respect to Switching inventions. CIP and DIV are not allowed (CA may be filed in accordance with Rule 53(b)).
3-3) Inventor Correction is allowed under Rule 48 (allowed only correction for the inventors by mistake).
3-4) Responsive submission (IDS, amendment (amendment after final is also acceptable), new argument, or new evidence), is required. In the case where the Responsive submission is not filed within the term specified by the USPTO, the application will be deemed to be abandoned. Note that, the statutory period for the Final Office Action of the prior patent application is valid.
3-5) Payment of Official fee may not be deferred. In the case where the official fee is not paid and/or the Responsive Submission is not filed for an RCE filed when an appeal is filed, the appeal will be withdrawn. As a result, when there are no allowable claims, the application will be deemed to be abandoned. When there is at least one allowable claim, the application will be issued as a patent. It should be noted that the claims dependent upon refused claims are not the allowable claims.
3-6) Rejections of 103/102(e) cannot be removed.
3-7) It is not a trigger for Eighteen Months Publication.
3-8) Even after Notice of Allowance, it is possible to submit IDS by filing an RCE as long as it is before the payment of Issue fee. In this case, the filing of a Petition, etc., is not required.

CPA practice
1. Patent Applications for the CPA practice
The CPA practice is applied to a patent application which satisfies the following requirements.
(a) The actual filing date is before May 29, 2000 (not the effective filling date, including US national phase entry of PCT applications)
(b) Before the payment of Issue fee
Namely, the CPA practice can no longer be taken for an application whose actual filing date is on or after May 29, 2000.

2. Application of the provision of PTA
It is possible to apply the provision of PTA. (Note the description 3-4) stated below)

3. Advantages and disadvantages of CPA
3-1) Since it is legally concerned as a new patent application, additional fee is required when adding claims. Therefore, the additional claims fee has to be paid in accordance with the fee provision for a new patent application. (When the number of independent claims is more than three, or total claim number is more than twenty, additional fee is required.)
3-2) It is possible to file a CPA for different inventions (Switching inventions). DIV is allowed, but CIP is not allowed .
3-3) Payment of Official fee may be deferred.
3-4) A patent issuing on the CPA is not entitled to any PTA accumulated in any prior application. The accumulated PTA is reset when filing a CPA.
3-5) It is not possible to file a second CPA after filing a first CPA. (This is because the actual filing date of the second application will be after May 29, 2000 (not the effective filing date).)
3-6) Deletion of the inventor is allowed.
3-7) It is a trigger for Eighteen Months Publication. (A CPA filed after November 29, 2000 is subjected to publication.)
3-8) A rejection according to "Non obviousness" under ˜103 may be overcome (Only for the case where the patent and the patent application concerned are in a relationship of commonly assigned or subject to an obligation of assignment.)
Cautions should be taken during the procedure

1) The RCE practice or the CPE practice can be taken for a patent application whose actual filing date is before May 29, 2000 (not the effective filling date) can take.
In this case, the US patent attorney tends to suggest the CPA practice. For the major reason for that, the provision of PTA is applied for the CPA practice.
Namely, the provision of PTA is not applied for the RCE practice, but is applied for the CPA practice. (Only for the current CPA application; A patent issuing on a CPA is not entitled to any PTA accumulated in any prior application.)

2) Only the RCE practice can be taken for a patent application whose actual filing date is on or after May 29, 2000 since it is no longer possible to take the CPA practice. Thus, attention should be given to the instruction to the US patent attorney.
In this case, the time spent for the RCE practice is not included in the "Three years" in the rule providing "PTA is applied in the case where the application is not granted as a patent within three years due to a reason USPTO is responsible" (35 USC ˜154(1)(B)). However, it is possible to apply the provision of PTA in the case where the application is not granted due to other reasons, which are USPTO, is responsible. Additionally, as to delays to which USPTO is responsible, it is possible to succeed to all of PTA accumulated by the procedure date.

3) The CPA practice can be taken for a patent application whose filing date is before June 8, 1995. (The RCE practice cannot be taken for such a patent application.)

4) It is not possible to file a second CPA after filing a first CPA.

5) If filing an RCE as the response to Final OA, the term spent for the procedure is subtracted. The accumulated PTA is reset when filing a CPA. When a final rejection is reversed after an appeal is fled, the term between the notice of appeal and the decision will be added. As with these cases, the term varies depending on the procedure taken.
If a long term for extension is accumulated, a continuation application should be avoided as much as possible. In the case where the continuation application is necessary, it is essential to leave a major invention in the parent application for keeping the extended term.

6) Depending on the response to Final OA, a continuation application should be avoided as much as possible if a long term for extension is accumulated. And in the case where the continuation application is necessary, it is essential to leave a major invention in the parent application for keeping the extended term.
Note that, among the terms for adjustment regarding PTA, the term for examination is automatically calculated by USPTO and is informed with Notice of Allowance. Further, the applicant is allowed to file a petition for reconsideration to change the term for adjustment, but it must be filed after Notice of allowance and before the payment of Issue fee. To file such a petition for the reconsideration, a deposition stating the exact term and the ground is required to be submitted. (Please refer to the "PATENT" 53rd volume October 2000 for details.)