Help: RCE FILING

Started by Jen, 01-30-15 at 04:52 PM

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Jen

One question:
   for filing  RCE request, does the un-entered amendment which is submitted after  finial rejection need to be resubmitted?  thank you. 


 

Tobmapsatonmi

Quote from: Jen on 01-30-15 at 04:52 PM
One question:
   for filing  RCE request, does the un-entered amendment which is submitted after  finial rejection need to be resubmitted?  thank you. 



There should be a check-box on the RCE form to say please consider my previously-submitted, unentered amendment and/or arguments.  I usually check that box then go ahead and check "other" and mention the date of submission.
Any/all disclaimers you see on this forum used by members more experienced and/or smarter than I, are hereby incorporated by reference as if fully set forth herein.

I'm doing well as of 08-09-18 @ 18:38 hours, and regret only not getting that 1000th post. Hope all are doing well indeed! Thanks!

JimIvey

Just to clarify Tobma's answer, no, you don't have to resubmit a previously submitted response if you're asking that the previously submitted response be considered.

Regards.
--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
Friends don't let friends file provisional patent applications.

Tobmapsatonmi

Thanks Jim - my answer was incomplete.
Any/all disclaimers you see on this forum used by members more experienced and/or smarter than I, are hereby incorporated by reference as if fully set forth herein.

I'm doing well as of 08-09-18 @ 18:38 hours, and regret only not getting that 1000th post. Hope all are doing well indeed! Thanks!

khazzah

Quote from: Jen on 01-30-15 at 04:52 PM
for filing  RCE request, does the un-entered amendment which is submitted after  finial rejection need to be resubmitted?   

Jim and Tobmap answered your question, but I'll add more to give a more complete picture, in case others are reading.

An RCE requires a *submission* of some kind. Typically that's a Response, but a 1.131/1.132 Declaration and an IDS also qualify as submissions.

Notably, the submission doesn't necessarily have to be attached to/file concurrently with the RCE form. You can instead check a box on the RCE form to have a *previous* submission considered, by identifying that submission (e.g. by date the paper was filed). 
Karen Hazzah
Patent Prosecution Blog
http://allthingspros.blogspot.com/

Information provided in this post is not legal advice and does not create any attorney-client relationship.

Jen

Thank you for all the answer and they are helpful! 

On  form PTO/SB/30,   following column  is checked   (√  Previously submitted. If a final Office action is outstanding, any amendments filed after the final Office action may be considered as a  submission even if this box is not checked. )    But I didn't fill in the date in:( Consider the arguments in the Appeal Brief or Reply Brief previously filed on ________. )  Refer to your guys answer, I should fill in the submitted date.

It is annoy.  But  Since  any document filed after the final office action may be considered as submission even if this box is not checked.  Therefore, it should be OK  even if the filing date is not specified. 

Am I correct?







khazzah

Quote from: Jen on 01-30-15 at 09:39 PM
Thank you for all the answer and they are helpful! 

On  form PTO/SB/30 ... But I didn't fill in the date in:( Consider the arguments in the Appeal Brief or Reply Brief previously filed on ________. ) 

Annoying. But  Since  any document filed after the final office action may be considered as submission even if this box is not checked.  Therefore, it should be OK  even if the filing date is not specified. 

Short answer: Yes, "should be OK."

Long answer:

I'm fairly certain your failure to fill in a date to identify the previously filed Response won't be a problem. That is, I've never heard of a practitioner getting a paper back from the PTO indicating this was a problem, much less a denial of entry of the RCE. (Which is the worst case, right?)

Anytime you deal with a PTO form there's always the *possibility* that a government employee will insist on the form being filled out a certain way. So it's best to follow all the "rules" very carefully.
But usually nothing terrible happens if you don't.

Karen Hazzah
Patent Prosecution Blog
http://allthingspros.blogspot.com/

Information provided in this post is not legal advice and does not create any attorney-client relationship.

Jen

Got it and appreciate your Patient.   

ChrisWhewell

I see ex's quick to make RCE replies "final" , moreso than in the past.   Or at least it seems that way to me, so be sure your submission is a strong one.   I mention this, since, if you are asking this question there still may be time to submit a supplement to your submission, if anything else has occurred to you since the submission was filed.   When I write OA replies I usually don't file them right away, rather, let them ferment a bit and give 'em a once-over a few days later with a fresh mind; that's been a productive method for me.
Chris Whewell

www.patentsearcher.com

NJ Patent1

Jen:  Welcome aboard.  I think this has been adequately covered above and that you should be "ok".  I just comment bcs I don't know if you are a "newbie" to the just this forum, or a newbie to prosecution per se.  If the former, stop reading.  If latter, my 2cents.  I don't always rely on the PTO forms alone (belts and suspenders guy).  I have my own fill-in form captioned "Request for Continued Examination Under 37 C.F.R 1.114" in which I affirmatively state to effect that "the R 116 Reply filed on ####### is the submission required, and that entry of the paper any claim amendments therein and reconsideration of the application are respectfully requested."  Totally unnecessary and waste of 0.2 billable hrs (if you are solo or small firm)?  Most likely unnecessary.  Call me jaded, but I don't always trust the Office (or EFS fer sure). 

IMO you "goofed", I have too. Relax.   At end of day, client should not be prejudiced, what counts.  But, whether you use PTO form, your form, or both; I suggest always including the date as a "best practice".  Why?  On rare occasion, I've filed two R 116's, and we all know Murphy's law, the Office will screw it up.  This is an excruciatingly details-oriented business (why good paras worth weight in gold, they catch this stuff).  All the best, NJP1

midwestengineer

Quote from: NJ Patent1 on 01-31-15 at 03:22 AM
Jen:  Welcome aboard.  I think this has been adequately covered above and that you should be "ok".  I just comment bcs I don't know if you are a "newbie" to the just this forum, or a newbie to prosecution per se.  If the former, stop reading.  If latter, my 2cents.  I don't always rely on the PTO forms alone (belts and suspenders guy).  I have my own fill-in form captioned "Request for Continued Examination Under 37 C.F.R 1.114" in which I affirmatively state to effect that "the R 116 Reply filed on ####### is the submission required, and that entry of the paper any claim amendments therein and reconsideration of the application are respectfully requested."  Totally unnecessary and waste of 0.2 billable hrs (if you are solo or small firm)?  Most likely unnecessary.  Call me jaded, but I don't always trust the Office (or EFS fer sure). 

IMO you "goofed", I have too. Relax.   At end of day, client should not be prejudiced, what counts.  But, whether you use PTO form, your form, or both; I suggest always including the date as a "best practice".  Why?  On rare occasion, I've filed two R 116's, and we all know Murphy's law, the Office will screw it up.  This is an excruciatingly details-oriented business (why good paras worth weight in gold, they catch this stuff).  All the best, NJP1

I agree with NJ and would like to add that at the end of the day, you're doing this work to make money.  While every little "goof" may or may not impact your client, it definitely may take time to fix that you can't bill (time=money).  You would be amazed at how quickly little goofs make prosecution work unprofitable.  If you are new, make sure that you take the time, right now, to put processes in place that are going to prevent little goofs.  Checklists, wait and review periods, layers of review, etc.

If you work at anything other than a very small firm, these processes should already be in place.  If you do not work at a small firm and these processes are not in place you should be concerned.

smgsmc

I guess I'm even more paranoid than this paranoid crowd.  I don't count on the check box on the RCE form.  If the sequence is

Applicant files an Amendment After Final on date d1 in response to the Office Action mailed on date d2.

Examiner mails an Advisory Action on date d3 denying entry of the amendments.

Then I will file an RCE with a new Response.  At the beginning of the Remarks section, I will summarize:

Applicant filed an Amendment After Final on date d1 in response to the Office Action mailed on date d2.  The Examiner mailed an Advisory Action on date d3 denying entry of the amendments.  The present Response is being filed in response to the Office Action mailed on date d2; an RCE is being filed concurrently.  Amendments to the Claims in this present Response are made with respect to the Claims in the Response dated d4.  <References to the appropriate CFR sections omitted for brevity here. My actual remarks include them.>

With electronic word processing and EFS, this takes little extra time and leaves no doubt at all as to what my latest Response is.

khazzah

Quote from: smgsmc on 02-01-15 at 03:08 PM
I guess I'm even more paranoid than this paranoid crowd.  I don't count on the check box on the RCE form.  If the sequence is

Final Office Action
Amendment After Final
Advisory Action denying Entry

Then I will file an RCE with a new Response.  At the beginning of the Remarks section, I will summarize:

Applicant filed an Amendment After Final on date d1 in response to the Office Action mailed on date d2.  The Examiner mailed an Advisory Action on date d3 denying entry of the amendments.  The present Response is being filed in response to the Office Action mailed on date d2; an RCE is being filed concurrently.  Amendments to the Claims in this present Response are made with respect to the Claims in the Response dated d4.  <References to the appropriate CFR sections omitted for brevity here. My actual remarks include them.>

Just curious .. does your paranoia lead you to always file an After Final before the RCE, in order to preempt a possible 1st-Final-After-RCE ?
Karen Hazzah
Patent Prosecution Blog
http://allthingspros.blogspot.com/

Information provided in this post is not legal advice and does not create any attorney-client relationship.

smgsmc

Quote from: khazzah on 02-01-15 at 05:45 PM
Quote from: smgsmc on 02-01-15 at 03:08 PM
I guess I'm even more paranoid than this paranoid crowd.  I don't count on the check box on the RCE form.  If the sequence is

Final Office Action
Amendment After Final
Advisory Action denying Entry

Then I will file an RCE with a new Response.  At the beginning of the Remarks section, I will summarize:

Applicant filed an Amendment After Final on date d1 in response to the Office Action mailed on date d2.  The Examiner mailed an Advisory Action on date d3 denying entry of the amendments.  The present Response is being filed in response to the Office Action mailed on date d2; an RCE is being filed concurrently.  Amendments to the Claims in this present Response are made with respect to the Claims in the Response dated d4.  <References to the appropriate CFR sections omitted for brevity here. My actual remarks include them.>

Just curious .. does your paranoia lead you to always file an After Final before the RCE, in order to preempt a possible 1st-Final-After-RCE ?

No, I do not routinely always file an Amendment After Final before RCE.  I file an Amendment After Final only if the Examiner grants me an after-final interview and during the interview indicates he's willing to consider an Amendment After Final.  Once he gets it, if he then decides it's going to take too much time (or if he's a junior, and his primary nixes it) and submits an Advisory Action denying entry, I refile with an RCE. 



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