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By Richard Gearhart
Founding Partner

Facing a final rejection in the patent application process can be discouraging, but it doesn’t always mean the end of the road. In many cases, there’s still time to revise your claims and continue working with the United States Patent and Trademark Office (USPTO). One way to do this is by filing a Request for Continued Examination (RCE). At Gearhart Law, we help inventors and businesses in New Jersey and beyond explore the right next step for their patent applications.

What Is a Request for Continued Examination (RCE)?

An RCE allows you to continue prosecuting your patent application after receiving a final office action. In other words, it gives you another chance to respond to the examiner’s rejections or objections without starting over.

Instead of filing a brand-new application, you’re essentially asking the USPTO to reopen the examination process based on your revised claims, new arguments, or additional documents. This can be especially helpful when there’s been progress in communication with the examiner, and you believe the application is still viable with a few changes.

Common Reasons to File an RCE

There are several reasons why you might consider submitting an RCE after a final rejection. These include:

  • You want to amend the claims to better address the examiner’s concerns.
  • You’ve identified a way to clarify claim language without changing the invention.
  • You have new prior art or information that supports the patentability of your invention.
  • You want to avoid the time and expense of appealing the decision.

An RCE is not a guarantee that the application will be allowed, but it gives you the opportunity to build on previous rounds of communication and work toward approval.

When an RCE Makes Sense (And When It Doesn’t)

Filing an RCE can be a smart move—but it’s not always the best path forward. Here are a few situations where an RCE might be worth considering:

  • The examiner’s feedback is focused on fixable issues, like wording or structure, rather than a fundamental objection to the invention itself.
  • There’s a productive back-and-forth happening with the examiner, and you believe one more round of communication might do the trick.
  • You’ve already invested significant time and money into the application, and continuing prosecution may be more cost-effective than starting from scratch.

On the other hand, you may want to think twice about filing an RCE if:

  • The examiner’s position appears rigid or unlikely to change, even with adjustments.
  • You’ve already filed multiple RCEs and seen little progress.
  • An appeal could offer a clearer or faster resolution.

In short, the decision to file an RCE often comes down to strategy, timing, and the substance of the rejection.

Alternatives to an RCE

If an RCE doesn’t seem like the right option, there are a few alternatives you can consider:

  • Appeal to the PTAB: If you believe the examiner’s rejection was legally or factually incorrect, you can file an appeal with the Patent Trial and Appeal Board.
  • File a continuation or divisional application: These filings can allow you to pursue different claim sets while maintaining the benefit of your original filing date.
  • Start over with a new application: Sometimes, it’s better to re-file a fresh application that’s stronger and more focused than the original one.

Each of these paths involves its own set of trade-offs, so it’s important to choose the one that fits your goals and situation.

How a Patent Attorney Can Help You Decide

Patent prosecution involves a lot of decision-making. Filing an RCE is one of those moments where legal and strategic input can make a real difference.

We can help you:

  • Review the examiner’s final rejection and determine your options
  • Amend claims or develop arguments that strengthen your position
  • Advise on whether an RCE, appeal, or new application makes the most sense

At Gearhart Law, we’ve worked with inventors at every stage of the patent process. Whether you’re early in the journey or responding to a final office action, we’ll help you understand your choices and make the next step count.

Don’t Let a Final Rejection Be the Final Word

A Request for Continued Examination can be a valuable tool when you’re not ready to give up on a patent application. It offers a way to extend the process and make your case more compelling, without starting over. If you’re unsure about your next move after a final rejection, reach out to Gearhart Law. As a trusted patent attorney in New Jersey, we’re here to help you keep moving forward with confidence.

About the Author
Richard Gearhart, Esq. is the founder of Gearhart Law and the host of a weekly radio show for entrepreneurs called “Passage to Profit”. He has built a firm with an international presence that helps entrepreneurs from around the world with their patent, trademark and copyright needs. Richard commands a breadth of experience that comes from nearly 30 years of practice in the writing and prosecution of hundreds of patents, and in all aspects of Intellectual Property law. In 2022, Richard was recognized by ROI New Jersey as a 2022 ROI Influencer in the Law List category for being one of the best of the best in New Jersey for intellectual property law. Gearhart Law emerged from Richard’s passion for entrepreneurship and startups and his belief that entrepreneurship grows the economy and creates jobs. When we started Gearhart Law, our goal was to help and support the new business ventures of 500 entrepreneurs and inventors. After 12 years, the firm has far surpassed this goal; today, we look forward to helping even more inventors and entrepreneurs get off to a great start and reach their own goals.