37 CFR 1.114 — Request for continued examination
Ninth Edition, Revision 01.2024
- (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.
[Added 65 FR 14865, Mar. 20, 2000, effective May 29, 2000; revised 65 FR 50092, Aug. 16, 2000; para. (d) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; paras. (a) and (d) revised and (f), (g), and (h) added, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); paras. (a) and (d) revised and (f), (g), and (h) removed, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); paras. (e)(3)-(5) revised and para. (e)(6) added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
Cited authority
- 37 CFR 1.17 Patent application and reexamination processing fees
- 37 CFR 1.313 Withdrawal from issue
- 35 U.S.C. 141 Appeal to Court of Appeals for the Federal Circuit
- 35 U.S.C. 145 (pre-AIA) Civil action to obtain patent
- 35 U.S.C. 146 Civil action in case of derivation proceeding
- 37 CFR 1.113 Final rejection or action
- 37 CFR 1.311 Notice of Allowance
- 35 U.S.C. 132 Notice of rejection; reexamination
- 37 CFR 1.111 Reply by applicant or patent owner to a non-final Office action
- 37 CFR 41.37 Appeal brief
- 37 CFR 41.41 Reply brief
- 35 U.S.C. 371 National stage: Commencement
Cited by
- 1120 Eighteen-Month Publication of Patent Applications
- 1126 Publication Fees
- 1204 Notice of Appeal
- 1205.01 Time for Filing Appeal Brief
- 1208.01 Fee for Forwarding an Appeal to the Board
- 1210 Actions Subsequent to Examiner’s Answer but Before Board’s Decision
- 1214.04 Examiner Reversed in Whole
- 1214.07 Reopening of Prosecution
- 1215.01 Withdrawal of Appeal
- 1216.01 Appeals to the U.S. Court of Appeals for the Federal Circuit
- 1308 Withdrawal From Issue
- 1430 Reissue Files Open to the Public and, Notice of Filing Reissue Announced in, Official Gazette
- 1452 Request for Continued Examination of Reissue Application
- 1490 Disclaimers
- 1502.01 Distinction Between Design and Utility Patents
- 1893.01(e) Inventor’s Oath or Declaration
- 2001.04 Information Under 37 CFR 1.56(a)
- 201.06(d) 37 CFR 1.53(d) Continued Prosecution Application (CPA) Practice
- 203.01 New
- 211.02(a) Correcting or Adding a Benefit Claim After Filing
- 2139 Rejections Under Pre-AIA 35 U.S.C. 102
- 2146.02 Establishing Common Ownership or Joint Research Agreement Under Pre-AIA 35 U.S.C. 103(c)
- 2150 Examination Guidelines for 35 U.S.C. 102 and 103 as Amended by the First Inventor To File Provisions of the Leahy-Smith America Invents Act
- 2159.01 Applications Filed Before March 16, 2013
- 217 Incorporation by Reference Under 37 CFR 1.57(b)
- 2266.01 Submission Not Fully Responsive to Non-Final Office Action
- 2271 Final Action
- 2272 After Final Practice
- 2285 Copending Ex Parte Reexamination and Reissue Proceedings
- 2730 Applications Filed on or After May 29, 2000; Grounds for Adjustment
- 2732 Reduction of Period of Adjustment of Patent Term
- 324 Establishing Right of Assignee To Take Action in Application Filed Before September 16, 2012
- 325 Establishing Right of Assignee To Take Action in Application Filed On or After September 16, 2012
- 502.01 Correspondence Transmitted by Facsimile
- 506 Completeness of Original Application
- 509.03 Claiming Small Entity Status
- 601.01 Complete Application
- 602.08(b) Inventor Signature and Name
- 605.01 Applicant for Application filed on or after September 16, 2012
- 608.01 Specification
- 608.01(p) Completeness of Specification
- 609 Information Disclosure Statement
- 609.04(b) Timing Requirements for an Information Disclosure Statement
- 706.07 Final Rejection
- 706.07(b) Final Rejection, When Proper on First Action
- 706.07(h) Request for Continued Examination (RCE) Practice
- 708.01 List of Special Cases
- 708.02 Petition To Make Special
- 708.02(a) Accelerated Examination
- 708.02(b) Prioritized Examination
- 709 Suspension of Action
- 711.02(b) Special Situations Involving Abandonment
- 711.03(c) Petitions Relating to Abandonment
- 714.12 Amendments and Other Replies After Final Rejection or Action
- 714.13 Amendments and Other Replies After Final Rejection or Action, Procedure Followed
- 715.09 Timely Presentation
- 716.01 Generally Applicable Criteria
- 717.01(f) Seasonable (or Timely) Presentation
- 717.02(a) Invoking the Prior Art Exception under 35 U.S.C. 102(b)(2)(C)
- 717.02(b) Evaluating Whether the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) is Properly Invoked
- 37 CFR 1.17 Patent application and reexamination processing fees
- 37 CFR 1.53 Application number, filing date, and completion of application
- 37 CFR 1.57 Incorporation by reference
- 37 CFR 1.57 (pre-PLT) Incorporation by reference
- 37 CFR 1.71 Detailed description and specification of the invention
- 37 CFR 1.97 Filing of information disclosure statement
- 37 CFR 1.102 Advancement of examination
- 37 CFR 1.103 Suspension of action by the Office
- 37 CFR 1.113 Final rejection or action
- 37 CFR 1.116 Amendments and affidavits or other evidence after final action and prior to appeal
- 37 CFR 1.137 Revival of abandoned application, or terminated or limited reexamination prosecution
- 37 CFR 1.198 Reopening after a final decision of the Patent Trial and Appeal Board
- 37 CFR 1.313 Withdrawal from issue
- 37 CFR 1.704 Reduction of period of adjustment of patent term
- 37 CFR 1.704 (2015-03-10 thru 2020-07-15) Reduction of period of adjustment of patent term
- 37 CFR 1.704 (2013-12-18 thru 2015-03-09) Reduction of period of adjustment of patent term
- 37 CFR 1.704 (2012-09-17 thru 2013-12-17) Reduction of period of adjustment of patent term
- 37 CFR 41.35 Jurisdiction over appeal