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[denik]

I have a final rejection on a patent application with some allowed claims. 

What is the best approach to get the claims which were not allowed?

1) File an RCE and argue to get the claims which have not been allowed. 
2) Issue the patent with the allowed claims and file a continuation (with terminal disclaimer).
3) Any other suggestions?

I am opting for 1 as the client is not in a rush to get an issued patent.  Do I risk losing the allowed claims if I go this route?  (e.g., the examiner changes his/her mind, which has happened to me before.)

[klaviernista]

You have essentially two options, which you have already identified.  Basically, you can get a patent on the allowed claims now and file a continuation drawn to the rejected claims (if commercially feasible).  Or, you can argue the non-allowed claims and risk the examiner changing his mind re: the allowed claims.

What option is best will depend on a number of factors, including finances.  E.g., filing a continuation will require, at a minimum, an extra set of filings fees and another set of maintenance fees should the new application issue.  The value of the rejected claims and the relative strength of the examiner's rejection will also play a role in the decision. 

So unfortunately, the answer to your question is, "it depends."  And without knowing all the relevant factors, it is pretty hard to provide a clear recommendation.

[JimIvey]

I'd say (2) is the better option, particularly since RCEs go into the same queue as continuations now (from what I understand).

(1) would probably only be better if (i) RCEs were somehow quicker than continuations, like they were until recently, and (ii) the allowed claims held little value for the applicant without the rejected claims.

I think you also have the option to appeal the rejection of the rejected claims, but you'd risk losing the allowed claims on appeal.

Regards.

[Isaac]

I'd say (2) is the better option, particularly since RCEs go into the same queue as continuations now (from what I understand).

RCEs go into the same queue as continuations, but get placed in that queue much more quickly.  Continuations and other new filings go through a fairly long pre-docketing period.  RCEs are simply docketed to the same examiner similar to any other amendment.  As a result, RCEs can take longer than before but should still be handled more quickly than continuations.  Some examiner have said that they don't expect to change their schedule for handling RCEs.

[denik]

I am in the process of filing the response electronically (as an RCE), and noticed that I can pay $405 for RCE, and there is also an option to pay $405 for "Submission after final rejection." 

http://www.uspto.gov/web/offices/pac/mpep/documents/appxr_1_129.htm

Any reason to use "Submission after final rejection" instead of an RCE? 

[klaviernista]

Pay the $405 RCE fee.   Not sure what the submission after final rejection fee pertains to offhand, but I know that the RCE fee is correct given that you are responding by requesting continued examination (and assuming you are representing a small entity).

[JimIvey]

The change in patent terms from 17 years from issue to 20 years from filing spurred a complete re-configuring of continuation practice.  Previously, nobody was overly concerned with dragging out prosecution.  However, everybody was concerned about that starting around June 1995.

If I'm not mistaken, the "submission after final" was a precursor to the RCE.  It gave an option for avoiding continuation-after-continuation before RCEs were available.  I'm trying to remember how File-Wrapper Continuations fit into that history. 

I'm surprised the submission after final is still there; I thought the advent of the RCE replaced it.  I have no experience with it.

If the RCE queue is now significantly lengthened (see Isaac's note on that), the "submission after final" might be a good option if you think you can make a small change and get quick allowance.

Regards.

[Isaac]

The change in patent terms from 17 years from issue to 20 years from filing spurred a complete re-configuring of continuation practice.  Previously, nobody was overly concerned with dragging out prosecution.  However, everybody was concerned about that starting around June 1995.

Note the limited applicability of Rule 129 to "an application, other than for reissue or a design patent, that has been pending for at least two years as of June 8, 1995, taking into account any reference made in such application to any earlier filed application"