When a patent applicant receives a “final determination” — a Final Office Action — from the US Patent Office, the applicant has several options. One option is to file a Request for Continued Examination (“RCE”). Here is a brief explanation of the definition of an RCE, the requirements and advantages.

What is an RCE?

Essentially, an RCE is a written request filed with the Patent Office for additional processing of a patent application. Generally, the applicant must submit additional arguments, additional adjustments/amendments to a claim or claims or present some other reason for the Patent Office to continue processing the application. Officially, the applicant is hoping that, with additional examination, the Final Office Action will be modified or changed. For example, when the Final Action is the equivalent of a denial, the Patent Examiner must provide reasons for the denial. Depending on the reasons, an RCE might be advisable if the Patent Examiner has, arguably, made a legal error or if a more detailed or extensive examination of some prior art would prompt a change in the Final Office Action.

Requirements for Filing an RCE

A request for an RCE can only be filed after issuance of a Final Office Action that is one of the following: a final rejection of a patent application, a Notice of Allowance or an action that otherwise closes prosecution in the application. An RCE must be filed within 4 months of the Final Office Action (although extensions can be obtained). The written request for an RCE must include:

• The proper request form
• The payment of the proper fees
• An information disclosure statement and
• An amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability

Once properly filed, the Patent Office will withdraw the finality of any Office Action and the patent application will be continued and the RCE will be considered.

Advantages of filing an RCE

There are several advantages to filing an RCE. First, an RCE is generally faster and less expensive than the alternatives, particularly since an RCE is often required eventually. For example, one option is to just file a response to the Final Office Action. Often, that option is not sufficient to move the patent application into a state where approval can be granted. Thus, an RCE is eventually required. Skipping the response saves time and money.

Second, particularly with complicated patent applications, the “problem” is that the Patent Examiner just needs more time. Like all employees, Patent Examiners are given a limited time to complete their work. In simple terms, filing an RCE will “reset the clock” which gives the Patent Examiner another “block of time” to complete the examination.

Third, an RCE is a method of keeping the patent application “alive” which is important for many reasons including the fact that the process of patenting does not have to start over “from scratch.” For other applicants, there are strategic reasons that an applicant might want the patent application to remain “pending” for as long as possible. Filing an RCE is one method of accomplishing this. This is one reason that a request for an RCE might be filed even after a “good” Final Office Action like receipt of a Notice of Allowance.

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When an RCE Is the Right Strategy

An RCE is not always the optimal response to a Final Office Action. The decision to file an RCE involves tradeoffs between cost, time, and the strategic value of the pending claims. An RCE is typically the best option when: (1) the examiner’s rejection contains a legal error or a factual misreading of the prior art that can be corrected with a focused amendment and argument; (2) there is new prior art or arguments that were not presented before the Final Action; or (3) the examiner informally indicated that targeted claim amendments would achieve allowance. If none of these conditions are present, an appeal to the PTAB may be more efficient.

RCE Procedure and Filing Requirements in Detail

Under 37 C.F.R. § 1.114, an RCE must be accompanied by:

• Form PTO/SB/30 — The request transmittal form.
• The appropriate filing fee — The fee varies by entity size (large, small, or micro). As of 2024, the small entity fee is $680 for a first RCE; subsequent RCEs are more expensive.
• An Information Disclosure Statement (IDS) — Listing all prior art references known to the applicant at the time of filing.
• A submission — Which may be an amendment to the claims or description, new arguments distinguishing the prior art, or new evidence (such as a declaration under 37 C.F.R. § 1.132 establishing unexpected results or commercial success).

The submission requirement is substantive: an RCE filed without any new argument, amendment, or evidence will be treated as if no submission was made, and the application may be abandoned. The submission must be genuinely responsive to the Final Office Action—not just a re-filing of prior arguments.

Alternatives to the RCE

Before filing an RCE, evaluate these alternatives:

• After Final Consideration Pilot 2.0 (AFCP 2.0) — Allows examiners to consider after-final amendments that do not broaden the claims. If allowance can be achieved without an RCE, AFCP 2.0 saves both time and money.
• Pre-Appeal Brief Conference Request — A streamlined procedure that asks the examiner’s supervisor to review the Final Action before an appeal brief is filed. If the conference agrees that the rejection was improper, the action can be withdrawn without further prosecution.
• PTAB Appeal — An appeal under 35 U.S.C. § 134 places the dispute before a panel of administrative patent judges. Appeals take longer than RCEs but are appropriate when the legal issue is clear and the examiner’s position is legally unsupportable.
• Continuation Application — Filing a continuation application preserves the ability to pursue claims in a new examination proceeding while the parent application’s dispute with the examiner resolves separately.

Strategic Use of § 1.132 Declarations

One powerful but underutilized tool available in RCE proceedings is the declaration under 37 C.F.R. § 1.132, which allows inventors or experts to submit evidence of facts not already of record. Common uses include declarations establishing unexpected results (particularly useful in chemical and biotechnology cases), long-felt but unsolved need, commercial success, and failure of others. These objective indicia of non-obviousness can be dispositive in cases where the examiner’s § 103 rejection is based on a combination of prior art references that are individually well-known. Courts and the PTAB have consistently held that such objective evidence must be weighed even when the technical case for obviousness appears strong.

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If you have questions about the issues discussed in this article, contact the experienced attorneys at Revision Legal. We handle intellectual property, internet law, and business law matters for clients across the country. Contact us online or call us at 1-855-RL-LEGAL.