In patent application prosecution, patent owners may file an RCE or continuation to continue prosecution as a matter of right under 37 CFR 1.53(b) or 1.53(d) or 37 CFR 1.114. However, these mechanisms are not available in patent reexamination. There may be occasions when additional prosecution may be beneficial in reexamination. For example, in certain situations special dispatch may be served by the submission of new evidence, prior art, or amendments. So, is a final action the end of the line? Prior to May 2004, one strategy sought by patent owners to extend prosecution was to file a second or subsequent request for reexamination citing the same art as the original request. The affect of this second filing was to force a new reexamination to remove the finality of the office action of the first request. When successful, this strategy permitted additional opportunities to argue for patentability. In May 2004, the USPTO revised section 2240 of the MPEP to provide that when a second or subsequent request for reexamination is filed citing only prior art which was previously cited as raising a substantial new question of patentability (SNQ) in an earlier filed and still pending reexamination proceeding, the second or subsequent request for reexamination will be ordered only if it presents a new SNQ based in the previously cited art. See MPEP 2240 (8th ed. 2001) (Rev. 2, May 2004). Consequently, as of May 2004, patent owners are prevented from obtaining entry of amendments and/or evidence not entered after final rejection in an ex parte reexamination proceeding which are based on the same SNQ of the pending proceeding. In order to address this issue, in 2005 the USPTO initiated plans to revise the rules and provide for filing a request for continued reexamination (RCR) to obtain continued prosecution on the merits in reexamination proceedings. See Notice of Changes in Requirement for a Substantial New Question of Patentability for a Second or Subsequent Request for Reexamination While an Earlier Filed Reexamination is Pending, 1292 Off. Gaz. Pat. Office 20 (March 1, 2005). This would include entry of amendments and/or evidence that was denied entry after a final rejection in an ex parte reexamination proceeding or after an action closing prosecution in an inter partes reexamination proceeding. However, five years later the rules have not yet been revised and RCR practice has not yet been implemented. Accordingly, patent owners who wish to pursue continued reexamination are currently advised to either: (1) file a petition under 37 C.F.R. 1.181 to seek review of a denial of entry of an amendment submitted after final rejection in an ex parte reexamination proceeding or after an action closing prosecution in an inter partes reexamination proceeding; or (2) file a petition under 37 CFR 1.182 to seek relief that is not currently provided by an existing rule, namel, a request for continued reexamination (RCR). Parties pursuing a petition under 37 CFR 1.182 requesting continued reexamination should ensure that the petition and accompanying submission are filed to further the prosecution of the reexamination proceedings, rather than to delay it. “The patent owner must make a bona fide effort to define the issues for appeal, or for the issuance of a reexamination certificate, when filing a request for continued reexamination, since this is a key factor in reducing pendency of a reexamination proceeding…For example, an amendment presenting claims defining over the art applied in the Action Closing Prosecution… while deleting the broader claims rejected in the Action Closing Prosecution would be an appropriate submission…..” stated in Decision on Petition mailed June 5, 2007 in Inter partes Reexamination No. 95/000,071. Yet, RCR practice is a relatively uncommon occurrence in patent reexamination. RCRs are increasingly denied and significantly less common today than even a year or so back. Moreover, as such petitions go to OPLA, (currently experiencing a 3-4 month backlog delay), often times the filing may not be decided prior to the time for appeal.
