(a) If prosecution in an application is closed, an applicant may request continued examination of the application by filing a submission and the fee set forth in § 1.17(e) prior to the earliest of:
(1) Payment of the issue fee, unless a petition under § 1.313 is granted;
(2) Abandonment of the application; or
(3) The filing of a notice of appeal to the U.S. Court of Appeals for the Federal Circuit under 35 U.S.C. 141, or the commencement of a civil action under 35 U.S.C. 145 or 146, unless the appeal or civil action is terminated.
(b) Prosecution in an application is closed as used in this section means that the application is under appeal, or that the last Office action is a final action (§ 1.113), a notice of allowance (§ 1.311), or an action that otherwise closes prosecution in the application.
(c) A submission as used in this section includes, but is not limited to, an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. If reply to an Office action under 35 U.S.C. 132 is outstanding, the submission must meet the reply requirements of § 1.111.
(d) If an applicant timely files a submission and fee set forth in § 1.17(e), the Office will withdraw the finality of any Office action and the submission will be entered and considered. If an applicant files a request for continued examination under this section after appeal, but prior to a decision on the appeal, it will be treated as a request to withdraw the appeal and to reopen prosecution of the application before the examiner. An appeal brief (§ 41.37 of this title) or a reply brief (§ 41.41 of this title), or related papers, will not be considered a submission under this section.
(e) The provisions of this section do not apply to:
(1) A provisional application;
(2) An application for a utility or plant patent filed under 35 U.S.C. 111(a) before June 8, 1995;
(3) An international application filed under 35 U.S.C. 363 before June 8, 1995, or an international application that does not comply with 35 U.S.C. 371;
(4) An application for a design patent;
(5) An international design application; or
(6) A patent under reexamination.
[65 FR 50104, Aug. 16, 2000, as amended at 69 FR 49999, Aug. 12, 2004; 72 FR 46841, Aug. 21, 2007; 74 FR 52691, Oct. 14, 2009; 80 FR 17963, Apr. 2, 2015]
Notes of Decisions
Supernus Pharm., Inc. v. Iancu, 913 F.3d 1351 (Fed. Cir. 2019).
“§ 132 (b) ; 37 C.F.R. § 1.114 . The '100 application issued on June 10, 2014, as the '897 patent.”
Pfizer Inc. v. Teva Pharm. USA, Inc., 803 F. Supp. 2d 409 (E.D. Va. 2011).
· cites it 2× “37 C.F.R. § 1.114 . Once the issue fee has been paid, however, the only way an applicant can file additional information is if such information shows that the claims are unpatentable.”
In Re: Brandt, 886 F.3d 1171 (Fed. Cir. 2018).
“Given the back-and-forth nature of examination, it is important for the examiner to have a few procedural tools to aid her efforts to issue as patents only those claims that meet the requirements of the Patent Act-the fundamental obligation of the Patent Office.”
Tafas v. Dudas, 541 F. Supp. 2d 805 (E.D. Va. 2008).
“§§ 120, 132(b), 134, 141, 145; 37 C.F.R. § 1.114 (2006). Continuation and continuation-in-part applications use the same specification as the pending parent application and enjoy the benefit of *809 the filing date of the parent application (the “priority date”), while amending…”
Abraxis Bioscience, LLC v. Kappos, 10 F. Supp. 3d 53 (D.D.C. 2014).
· cites it 3× “§ 132 (b); 37 C.F.R. § 1.114 (b). As the USPTO explains, an “RCE is not a new patent application; it merely continues the examination of the same application” and, consequently, “retains (1) the filing date of the underlying application and (2) the amount of patent term…”
Exelixis, Inc. v. Kappos, 919 F. Supp. 2d 689 (E.D. Va. 2013).
· cites it 2× “” 37 C.F.R. §§ 1.114 (c), 1.17(e); 35 U.S.C.”
Maass v. Lee, 189 F. Supp. 3d 581 (E.D. Va. 2016).
“37 C.F.R, § 1.114. Importantly, a patent applicant’s decision to request continued examination rather than filing a PTAB appeal comes at a cost for the applicant with respect to the PTA calculation.”
Exelixis, Inc. v. Kappos, 906 F. Supp. 2d 474 (E.D. Va. 2012).
“37 C.F.R. § 1.114 (b). Once the PTO determines that the application contains patentable claims, the PTO will issue a “Notice of Allowance” that informs the applicant that he “is entitled to a patent under the law[.”
Ariad Pharm., Inc. v. Matal, 283 F. Supp. 3d 503 (E.D. Va. 2018).
· cites it 2× “See 37 C.F.R. § 1.114 . When an RCE is filed, the "Technology Center" assigned to the application initially processes the request and verifies that all the threshold requirements for continued examination are satisfied.”
ADE CORP. v. KLA-Tencor Corp., 252 F. Supp. 2d 40 (D. Del. 2003).
“) Thereafter, on February 1, 2001, the applicants reopened prosecution by filing a Request for Continued Examination under 37 C.F.R. § 1.114 . (Id. at '259 Patent Prosecution File History, Request for Continued Prosecution dated Feb.”
Hyatt v. United States Pat. & Trademark Off., 110 F. Supp. 3d 644 (E.D. Va. 2015).
“PTO regulations state that the Appeal Board’s jurisdiction ends (i) when there is a “request for continued examination” pursuant to 37 C.F.R. § 1.114 , (ii) if appellant reopens prosecution pursuant to 37 C.”
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