Practice Question Day

Let’s look at a practice question today, one I wrote but one this is typical to what you will see on exam day.

 7. In which of the following situations would filing a request for continued examination (RCE) be proper?

 (A) An application for patent received a restriction requirement on May 23, 2005. The attorney mis-understood the instructions of the client and elected the method claims, rather than the product claims. The client has instructed the lawyer to undo this mistake.

(B) The application has received a first action on the merits. The examiner rejected all the claims based on complex prior art the attorney does not pretend to understand. The client indicates she will be able to provide detailed comments in about a year, and to “keep the application in play til then”.

(C) The applicant filed a provisional application on March 3, 2010. The client was unhappy with the description of one embodiment, and instructed the attorney to make several changes and additions.

(D) A notice of allowance was received yesterday in an application owned by Mega Corp and related to the production of colored ice. In the same mail came a copy of an action in the corresponding Canadian application citing prior art not cited by the US examiner. After reviewing this new art, the applicant and attorney agree that this art should be cited to the examiner in an information disclosure statement (IDS).

(E) The appeal of applicant Brown to the Board of Patent Appeals and Interferences resulted in a decision affirming the rejection of the examiner. A notice of appeal to the CAFC was immediately filed. Shortly, thereafter the attorney recommended that the claims should be amended and considered by the examiner rather than pursue the present appeal.

 Here is the answer.

 7. (D) is correct. MPEP 706.07(h). An RCE can be filed at any time after prosecution has been closed. A notice of allowance does just that. There are of course other ways to get this art cited. A continuation could be filed or the IDS could be considered if accompanied by the required fee and a statement that the art has only recently come to the attention of the applicant. 37 CFR 1.114.

 In (A)  and (B) prosecution has not been closed so an RCE cannot be filed. Again, a continuation is one possibility. (C) is wrong because RCEs can never be filed in provisional applications. They are never prosecuted so there would never be any need. (E) is wrong because jurisdiction has now passed to the Court and from the Office.

 Didn’t that question show you what you know and don’t know? I have a thousand more for you. The more you do before exam day, the greater your chances of success.