The U.S. Patent and Trademark Office (USPTO) allows a Request for Continued Examination (RCE) to be filed with a request to suspend processing of the RCE for up to 3 months, in accordance with 37 CFR 1.103(c). The suspension request is submitted merely by checking a box on the USPTO’s standard RCE form, indicating a desired delay of 1, 2, or 3 months, and paying the required processing fee. Prolonging prosecution is ordinarily undesirable, so why would an applicant want to purposely delay examination after the filing of an RCE? This article explores four possible reasons.
- Waiting for data: Clinical or other testing data may not be available when an RCE is due for filing but may be expected to become available within 3 months of the due date. Suspending RCE processing can buy time for the data to be gathered and submitted to the USPTO in a supplemental response or Rule 132 Declaration to traverse a claim rejection or objection. Without a request to suspend processing, the examiner may proceed with examination in the meantime without the benefit of the applicant’s data.
- Updates to the law: If a court decision or USPTO guidelines may be issued shortly after the due date for filing an RCE, requesting a delay in examination may improve the quality of prosecution by allowing enough time for the decision or guidelines to be available to the examiner and applicant. This strategy may be particularly useful when faced with a rejection dealing with an evolving or uncertain area of law, such as the current state of 101 statutory subject matter law.
- Defer costs: Suspending prosecution delays the prospect of incurring future fees, including USPTO fees and fees for attorney/agent prosecution services. If an applicant is particularly cost conscious or wants to save money in the short term, forcing the USPTO to put examination on hold for months can ensure that the applicant will not incur fees within the delayed period (barring other needed actions, such as preparing a Rule 132 Declaration before the suspension period expires).
- Lower fees: The fee for suspending RCE processing (currently $140, $70, and $35 for large, small, and micro entities, respectively) is less than the fee for a one month time extension (currently $200, $100, and $50 for large, small, and micro entities, respectively) and even more dramatically low compared to the fees for longer time extensions. Thus, as long as an RCE is filed with a submission as required under 37 CFR 1.114 (i.e., an Information Disclosure Statement, an amendment, etc.), supplemental papers may be submitted after the RCE is filed without incurring the time extension fees that such later filings would have otherwise required had the RCE not been filed until those papers were submitted.