In my experience most RCEs are necessitated by the Examiner applying new prior art in a second Office action and making it final. The applicant not having seen the new art then needs to further amend the claims, but the Examiner will not permit the Applicant to do so after final. When I was an Examiner, I was taught to read and understand the specification before scoping out the field of search, and to search the ...more »
Q10: Avoiding RCEs
I recently received a first Office Action (OA) for an application and then set up an interview. I emailed the Examiner various portions of the Specification that were disclosed but not claimed that I was considering for amendments to the claims. The Examiner emailed back, indicating he had done another search, and cited different portions of references, for each portion of the Specification that I had sent him. I then ...more »
The best strategy is to file 1.116 amendments as soon as possible and have interviews, then file additional 1.116 amendments and, when appropriate, 1.132 declarations.
(1) If within your practice you file a higher or lower number of RCEs for certain clients or areas of technology as compared to others, what factor(s) can you identify for the difference in filings? Not applicable (2) What change(s), if any, in USPTO procedure(s) or regulation(s) would reduce your need to file RCEs? None (3) What effect(s), if any, does the USPTO’s interview practice have on your decision to file ...more »
None, we expect to file RCEs now because we must start with the broadest claims we think the client is entitled to and the Examiners push to final rejection too early to get their disposal credit so we see RCEs as likely if not inevitable. Hence, we have no strategy to avoid RCEs. Our strategies are to get the broadest claims allowed at the lowest total cost for our clients.