Thursday, June 21, 2012

Prosecution tip: Using an RCE to suspend prosecution

Takeaway: An Applicant filed an RCE to pull from appeal in order to file declaration evidence of non-obviousness. While doing so, the Applicant took advantage of a little-used rule (§ 1.103(c)) to request suspension of prosecution for three months, thus giving the Applicant time to obtain the declaration. The Applicant then filed expert evidence under § 1.132 before the close of the suspension period. (Application of Hermann, Appl. No. 09/817,797, Tech. Center 2800, available on Public PAIR.) 

Details: There are two mechanisms by which an Applicant can request suspension of prosecution. You can file a petition under § 1.103(a), which requires a showing good and sufficient cause. Or you can request suspension under § 1.103(c) by simply checking a box on the RCE transmittal. No reason for the suspension is required. However, note that the request for suspension does not itself serve as the "submission" required to be filed with an RCE. Therefore, you should also file a response to the Final Office Action or refer to a previously filed After Final.

My two cents:  I think this route sounds like a very useful option once you decide to file declaration evidence. Typically, you're at final when you realize that declaration evidence is what you need to beef up your position. That means you're already going to need to file an RCE. So for a relatively small fee (currently $130), you can buy yourself an extra three months to obtain the declaration from the inventor or other expert. That's way cheaper than paying EOTs.

Postscript: Unfortunately, the declaration evidence didn't work for the Applicant in 09/817,797.  The Examiner not only found the declaration unpersuasive, the Examiner stated that "the declaration fails to teach why the device recited in the claims of the instant application is workable" and then gave a new enablement rejection. The Applicant submitted another declaration to address both the enablement and prior art rejections. The application is currently on appeal.

5 comments:

  1. Given the new count system and the focus on COPA cases over RCE cases what is the the likelihood that the examiner would have picked up the case anyway with that 3 month period? Pretty small.

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  2. There's also a $130 fee.

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