Legal Definitions - Rule 1.53 application

A Rule 1.53 application, more commonly known as a Request for Continued Examination (RCE), is a formal request submitted to the U.S. Patent and Trademark Office (USPTO) by a patent applicant. Its primary purpose is to reopen the examination of an existing patent application that has received a final office action (such as a final rejection) or has been allowed but the applicant wishes to submit further information or amendments before the patent issues. By filing a Rule 1.53 application, the applicant can continue to negotiate with the patent examiner, submit new arguments, or make additional changes to their application, without having to file an entirely new patent application.

Here are some examples illustrating when a Rule 1.53 application might be used:

• Example 1: Introducing New Evidence to Overcome a Final Rejection

  A company, "InnovateTech," has a patent application for a new type of sustainable packaging material. After several rounds of examination, the USPTO examiner issues a "final rejection," stating that the invention is obvious based on existing prior art. InnovateTech's research team then discovers a crucial scientific study, published *after* the final rejection was issued, which strongly supports the non-obviousness of their invention and clearly differentiates it from the cited prior art.

  How it illustrates: To introduce this new, relevant evidence and continue arguing for patentability without abandoning their current application or filing a new one, InnovateTech files a Rule 1.53 application. This reopens examination, allowing the examiner to consider the new scientific study and InnovateTech's updated arguments, giving the application another chance at allowance.

• Example 2: Making Minor Amendments After a Notice of Allowance

  Dr. Elena Petrova receives a "Notice of Allowance" for her patent application covering a novel medical diagnostic device. Before paying the issue fee and having the patent formally granted, she reviews the allowed claims and realizes there's a minor grammatical error in one claim's wording. Additionally, based on recent market feedback, she wants to slightly clarify the scope of another claim to better protect her invention, ensuring no new subject matter is added.

  How it illustrates: To make these precise amendments and have them considered by the examiner before the patent issues, Dr. Petrova files a Rule 1.53 application. This reopens prosecution, allowing her to submit the corrected and clarified claims for the examiner's review, ensuring the patent issues with the most accurate and desired language.

• Example 3: Submitting Detailed Arguments After a Final Rejection

  A small inventor, Mr. Chen, has a patent application for an improved bicycle braking system. The examiner issues a final rejection, citing several pieces of prior art and arguing that Mr. Chen's invention lacks novelty and non-obviousness. Mr. Chen believes the examiner has misinterpreted some aspects of his invention and the cited prior art. He wants to submit a detailed legal argument explaining why his invention is distinct and patentable, along with minor claim amendments to clarify specific features, but he needs more time and a fresh look from the examiner.

  How it illustrates: To continue the examination process and present his detailed arguments and amendments after the final rejection, Mr. Chen files a Rule 1.53 application. This reopens prosecution, allowing the examiner to fully consider Mr. Chen's new arguments and amended claims, giving him another opportunity to persuade the USPTO of his invention's patentability.