Patent It Yourself - PDF Archive

404 | Patent it YOURSELF
make sure your end run around a particular examiner will
work. Lastly, in an effort to get a new examiner, it also
helps to change the title of your invention to one that is
commensurate with your revised narrowest claim. For
example, change “Gear with Anti-Backlash Pawl” to “ —
Bicycle Pedal Drive Gear—.”
See an Expert
Changing examiners is one of several situations
where I believe a consultation with a patent attorney or agent
may be called for, due to the artsy nature of claims drafting.
(See Chapter 6, Section E.)
CAUTION
20-Year Term. Under GATT Law, if you file an
RCE or continuation application (or a continuation of a
continuation) and get a patent on your RCE application or
continuation, the patent will expire 20 years after the filing
date of your first, original, or parent application. So it behooves
you to file any RCE application or continuation as soon as
possible and to prosecute it diligently if you don’t want your
monopoly to be shorter than the former 17-year term. Since
any continuing application (continuation, division, or CIP) will
expire 20 years from the filing date of its parent case, before
filing any continuing application, consider whether you’ll really
need to rely upon the parent case’s filing date. If you’re certain
that no adverse prior art has issued since the parent’s filing
date, you can have any new case expire 20 years from its filing
date (rather than from the filing date of the original case) if
your new case doesn’t claim priority of your original case, i.e.,
if you file it as a regular patent application, rather than as an
extension.
C. Request for Continued
Examination (RCE)
Requesting a Continued Examination (RCE) of an existing
application has the same effect as filing a continuation
application but without going through the paperwork of
filing a new application. The applicant simply sends in
a form, pays an RCE fee, and continues prosecuting the
same application. Prosecution continues as if there were
no final action. In other words, filing an RCE is a way of
buying your way out of a final action so you can continue
prosecution for one or two more go-arounds, as in the old
days.
In order to file an RCE, prosecution in the application
must be “closed”—that is, the last OA must have been a
final action, a notice of allowance, or some other action
closing prosecution. Also, the application must be a regular
utility application (not a PPA or design application). When
a patent issues on an RCE, the heading of the patent will not
indicate that it’s based on the RCE.
When you file an RCE, the PTO uses your same
file jacket, papers, Serial Number, and filing Date. The
procedure is covered by the PTO’s Rule 114 and the RCE
Transmittal Form (Form 14-1/PTOSB/30).
To file an RCE, simply do the following:
• If filing by mail, complete Form 14-1.
• Prepare a check or CCPF (Form 10-4) for the RCE fee
(large or small entity—see Appendix 4, Fee Schedule).
Note that the RCE fee is less than a new filing fee
and is fixed regardless of the number of claims in the
application.
• Prepare an amendment containing the new claims you
desire to prosecute or check the appropriate block on
Form 14-1 if you want to have your Amendment under
Rule 116 entered.
• If you file by mail, attach a receipt postcard (see
Chapter 10).
You must send your RCE before the period for response
to the final rejection expires or before any time extensions
you’ve bought expire. (For an explanation of purchasing
extensions of time, see Chapter 13.) As is the case with an
amendment, you can eFile, fax, or mail your RCE request
on the last day of the period for response if you complete
the Certificate of Mailing section at the bottom of Form 14-
1. Since you’re not filing a new application, you don’t have
to use Express Mail and you don’t have to get the RCE on
file before the period expires. Fax the papers to the PTO’s
central fax number or mail to Mail Stop RCE, P.O. Box
1450, Alexandria, VA 22313-1450.
If you’re a registered eFiler you can file the RCE
electronically at the PTO’s Electronic Business site.
Convert the completed RCE Transmittal Form (Form 14-1/
PTOSB/30), and amendment to PDF and file them as if
filing an amendment. Pay the RCE fee on the PTO’s site by
credit card. You don’t have to file a new IDS or ADS when
you file an RCE.
For the Amendment, complete Form 13-1 exactly as
you would do with a regular amendment. Then proceed as
usual: Cancel the old claims and insert the new claims in
the normal amendment manner, numbered in sequence
after the highest numbered claim of the prior application.
Under “Remarks,” you should state, “The above new claims
are submitted to be patentable over the art of record for the
following reasons.” Then give your reasons and arguments