US Patent Practice: Minimizing The Need For RCE Filings

Typical Prosecution Flow

The typical flow of prosecution before the U.S. Patent Office begins when the U.S. Examiner issues a First Official Action on the merits. A response is then submitted to the First Official Action and the U.S. Examiner considers this response. If the application is not allowed, the Examiner issues a Second Official Action, which is almost always a Final Official Action.

Once a final rejection has been issued, the Applicant's options are limited. Substantive amendments are rarely allowed by the Examiner after a final rejection.

Before Filing a Response

The first step is to check to make sure that the rejection has been properly made final. Although not often, sometimes the Examiner makes a rejection final when it should not be final. For example, if the Examiner needs to rely on new prior art in the second rejection, and the need for the new prior art was not caused by amendments made in response to the first rejection, the