Although included in the Act in the sections relating to the Patent Term Guarantee, one further provision which is really separate in character is a provision that, after final rejection of an application, it will be possible to continue prosecution by the simple expedient of paying a fee. [31] This provision came into effect on May 29, 2000. It does not apply to design applications but applies to all applications for which a regular application or a PCT application designating the United States was filed on or after June 8, 1995. Final Rules for implementing the new statute were published on August 16, 2000. [32] The rules make it clear that a Request for Continued Examination (RCE) must be filed after the prosecution is "closed" but prior to payment of an issue fee (if the issue fee has been paid, it may in some cases be possible to withdraw the case from issue in order to file an RCE), the abandonment of the application or the filing of a notice of appeal to the Court of Appeals for the Federal Circuit. For the purposes of this provision, the requirement that prosecution is "closed" normally means that the last action was a final rejection or the application is on appeal to the Board of Patent Appeals and Interferences. If an RCE is filed after appeal to the Board, the filing of the RCE will be deemed to be a withdrawal of the appeal. [33]
Unlike the two forms of continuation currently available, [34] a request for continued examination is not a new application but simply a request for continued activity in a case that is already on file. This has some implications with respect to the Patent Term Guarantee Act which is discussed elsewhere. Use of the RCE procedure requires that in addition to payment of the fee a "submission" to the USPTO must also be made.
The nature of the submission depends on the factual situation at the time the RCE is filed. The rules require that if one wishes to continue prosecution by filing an RCE and an official action is outstanding on the case then, unlike the position with continuation applications, a response to the outstanding official action must be filed with the request for continued examination. If this is not the case then the submission may be, for example, a request to consider unentered amendments filed after a final rejection, some other amendment, argument or new evidence or an information disclosure statement.
[31] American Inventors Protection Act of 1999, Section 4403 amending 35 USC 132 and 37 CFR 1.114, makes it clear that the new provision applies only to applications on which an official action or notice of allowance has been issued and does not apply to provisional applications, design patent applications, reexamination applications or to applications filed before June 8, 1995. 37 CFR 1.53(d) restricts the use of continuing prosecution applications (CPAs) as previously permitted to situations where the application from which the CPA claims priority was filed before May 29, 2000 (in the case of PCT applications entering the U.S. national phase that means national phase entry was completed by that date) and the CPA is filed before payment of the issue fee or abandonment or other termination of proceedings in the case whose filing date is claimed.
[32] 37 CFR 1.114 in Federal Register Vol 65, No 159, pages 50104 et seq.
[33] 37 CFR 1.114(c).
[34]Ordinary continuations and "continuing prosecution applications." However, the reforms phased out continuing prosecution applications by restricting their use to design applications and utility and plant applications filed before May 29, 2000.
