This post is part of a series of posts entitled A Guide To Intellectual Property Protection. For a comprehensive list of articles contained in this series, click here.
Once an Examiner issues a final Office Action, patent applicants have limited ability to amend the claims of that application to distinguish those claims from the references cited by the Examiner. A number of responsive options are available to the patent applicant, depending upon that applicant’s view of the patentability of the pending claims that stand rejected by the Examiner.
Continuing Application
A continuing application is basically an original patent application that is refiled. The second application is entitled to the benefit of the filing date of the first application, and must be filed as a separate application before termination of proceedings on the prior application. Thus, after an applicant has received a final rejection, but before the examination proceedings have been terminated, an applicant can file a continuing application and start the examination process all over again. A continuing application is appropriate where the original application contained patentable subject matter but did not clearly identify or distinguish it from prior inventions. This procedure can be continued over several or more continuations, but it does involve the payment of additional fees by the applicant. The filing of a number of continuations may also significantly shorten the ultimate enforceable term of a resulting patent.
A more streamlined continuation application is also available. This type of application is known as a Request For Continued Examination (“RCE”). While the fees are similar to a regular continuation application, the advantage is that an RCE application receives a more favorable placement in the Examiner’s queue and is examined again more rapidly. However, in order to file this type of continuing application, the Applicant must respond to each of the Examiner’s objections and rejections raised in the original application.
Continuation-in-part
A continuation-in-part is an application filed during the lifetime of an earlier application by the same applicant, repeating some substantial portion or all of the earlier application and adding matter not disclosed in the earlier case. The continuation-in-part application is entitled to the benefit of the filing date of the earlier application as to the common subject matter. A continuation-in-part application is appropriate when a patentable improvement of the original invention is developed after the original application is filed.
Board Of Appeals
After the claims in an application have been rejected twice, or after a final rejection has been received, an applicant may, upon the payment of a fee, appeal the decision of the Examiner to the Patent Office Board of Appeals. Such an appeal is appropriate when the applicant feels that the Examiner’s rejection is clearly incorrect.
Federal Court
Any applicant dissatisfied with the decision of the Board of Patent Appeals may appeal to the United States Court of Appeals for the Federal Circuit. This is an unusual and expensive procedure that can only be justified for inventions having substantial commercial potential.
