Patent and Invention Help Forum

RCE after final except if you have a clam in condition for allowance?

Every time I got a "final" it wasn't really final and I could file a RCE and continue with changed claims etc.., I have done that several times. To me it's like starting over but not losing the priority date.

Now there is only one main claim they say in condition for allowance and all the others are "rejected". I've never had any in "allowance" before. They act like I should take it and run.

I wanted to edit the rejected claims and start all over again, leaving the "allowed" one untouched which to me would then be still "in condition for allowance".

I was told that I can't do a RCE this time and I have to give up on the other claims, but those extra claims would protect my invention further and better if challenged later.

Is this actually true just because they like one claim? I lose the chance to fix the others? I don't like not fully protecting my invention. I don't like that advice when the other claims are also important. I can't see the patent office making me throw out claims that I could edit a little and re-submit to make them "in condition for allowance" too.

Why should I stop now and take what I think is a incomplete patent and a partly unprotected invention?

Thanks for the advice on the other post.

Brad

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Re: RCE after final except if you have a clam in condition for allowance?
« Reply #1 on: January 12, 2022, 01:34:53 PM »
You should be able to file an RCE but in this case it may make sense to:

1. Take the allowed claim and get your first patent issued (patent #1),
2. Before your first patent issues, file a "continuation" patent application that links back to your first application and keeps your priority chain active.
3. Try to get claims approved on your continuation application.  If successful you will then get a second patent issued (patent #2)

This is only slightly more expensive than the RCE path but ensures you will at least get one issued patent out of all this plus buys you some goodwill with the patent examiner.

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Disclaimer: The information on this site is not legal advice and is not a substitute for an attorney or a law firm.  You should seek legal counsel for legal questions.

Re: RCE after final except if you have a clam in condition for allowance?
« Reply #2 on: January 12, 2022, 02:47:21 PM »
Thank you. I didn't think a RCE wouldn't be possible. Seems as long as you are trying to make changes that will get it allowed (as they keep throwing prior art at you over and over) it will be accepted for reexamination, I think they like the fees.

Is there any technical reason to not expect the patent office to allow a claim that is the exact same as the one allowed in the "final" ?

I don't want to end up paying two maintenance fees on two patents is one good reason.


Brad

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Re: RCE after final except if you have a clam in condition for allowance?
« Reply #3 on: January 12, 2022, 05:52:14 PM »
There is a small chance that if you don't take what they allow, they can re-run their search and offer new rejections.

I once had all 20 of my claims allowed, I paid the issue fee, and then it went to some quality control person at the patent office who sent the case back to the examiner to start the examination process over.  We were not happy but nothing we could do. 

For this reason it often makes sense to take what you can get when you can get it and then file a continuation for additional claim coverage.  As you noted this increases this cost though as you have to maintain two patents instead of one. 
My free patent template: https://patentfile.org/free-provisional-patent-template/

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Disclaimer: The information on this site is not legal advice and is not a substitute for an attorney or a law firm.  You should seek legal counsel for legal questions.

Re: RCE after final except if you have a clam in condition for allowance?
« Reply #4 on: January 18, 2022, 12:53:59 PM »
Thank you. I just thought, in the "final" they say some small things need editing to be allowable, and say why they are rejecting the other claims, which is based on a prior art reference that to me obviously "teaches away" from the present invention (I have shown this several times before with other ones and I was right) and really in my mind the main problem is that this is truly novel to the point the examiners don't really grasp it yet (my opinion).

The main question is, can I answer the "final", make the small edits, but also argue why the prior art doesn't apply to the other rejected claims and leave those claims in the response too (with some small edits they want anyway)? Then would they look those arguments over and if they still don't like them, they would let me know (and why) within time and at that point I could still decide to do the RCE or like you said continuation or maybe just take what I can get? (my choices if I think their reasons are valid or not)

It seems to me they are not even allowing me to show them why the prior art doesn't apply, which they say is what they are depending on mostly to reject the other claims and basically they think are right and that's it, their ears are shut.

The procedure is what I am having problems with, if I simply respond to the "final" will they get back to me shortly within time to let me do a RCE or something or is it over, done and I lost the entire thing?

Or if I fix the small edits they are asking for and they allow that one claim and not the others again, it goes to "issuance"?, can I then not pay the issuance but go to RCE or continuation?

Another way to look at it maybe is do they give you a period of time after you answer a "final", like the 3 months they always seem to give, to then file a RCE to argue further their rejection of the other claims even after they say all is OK with the first one and is ready to issue.

Also, another search is fine with me (with RCE), if they can find a actual valid prior art that really applies, someone later could also find that prior art, challenge the patent using it and the patent would not be worth the paper it's printed on, right? I would like it to be solid and complete as possible now, not later.

And with a continuation they would do another search anyway, so I don't see why I should be worried about that. Either it's novel or not.

Is there a page/writeup on your site that talks in really good detail about the continuation things you can do? It seems there are 2 or 3 types and I would like to know the "downfalls" of each of them like when you said I would have two patents and two maintenance fees in the future but one type seems to not go to two patents or I don't understand.

And one type says something like the filing date is when you file the continuation, so do they get to start throwing prior art at me from up to Jan 2022 for those claims?

Do you look over the file "wrapper" (public info USPTO) of a patent and maybe take over/ review / help or file things properly after I write most of it, with a basket case like this?

And really, thanks for your help.

Brad

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Re: RCE after final except if you have a clam in condition for allowance?
« Reply #5 on: January 18, 2022, 01:39:15 PM »
Sorry I don't really like to take over applications as they are usually a bit of a mess.  Just like a licensed electrician would not want to take over wiring a house after the homeowner did most of it and covered up the walls. Too much risk and headache with very little money/reward.

To answer your specific question, you should call the examiner to see what they suggest.  Sometimes they will review an amendment after final if you are only making minor changes or doing something they suggested in their last response.  Otherwise they don't have to review anything as prosecution is technically closed at this point.   If you think you are close to an allowance with just minor tweaks I would call them and see if they will let you file the reply with an After Final 2.0 request:  https://www.uspto.gov/patents/initiatives/after-final-consideration-pilot-20

It is really up to you to keep track of the dates.  If your final rejection was mailed January 1, 2022 you have until April 1, 2022 to file a response (without an extension fee) or until July 1, 2022 to file a reply but pay a late fee (extension of time fee). 

Most firms will make a note to file your response after final within the first two months and then set a reminder to check on it every week.  If you don't hear back from the examiner with a Notice of Allowance by the first deadline then file your RCE or Continuation at that time before the first due date to avoid the extension of time fees.

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Disclaimer: The information on this site is not legal advice and is not a substitute for an attorney or a law firm.  You should seek legal counsel for legal questions.

 

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