[Patentpractice] Question about First Action Final after RCE

[Roger Browdy]

The RCE procedure (as explained in the MPEP) is strange as it provides that an examiner cannot make the next action final if an amendment after final was not entered by means of an Advisory Action.  See MPEP 706.07(b), 4th paragraph.  However, if the RCE is filed on the same day as the amendment after final, for example, and an Advisory Action was never issued, the examiner can make the next action final, even though the amendment clearly presented new issues so that it would never have been entered had an advisory action been issued.  The literal language of the MPEP permits this (see MPEP 706.07(h)(VIII) and form paragraph 7.42.09).  On the other hand, I know that many examiners and supervisors interpret it differently and would never make the next action final if the amendment clearly raised new issues, even if no advisory action had been issued refusing entry and even though after-final practice would technically permit it.

I am filing a petition to withdraw finality in such a case, but I would like any input from anyone who may have filed such a petition in the past or otherwise has any insight into the issue of whether the PTO policy is to make such after-RCE actions final or not.  I have seen blogs where some have said that the action cannot be made final if the response raises new arguments on patentability.  But this is not what MPEP 706-07(b) says, which MPEP 706.07(h)(VIII) says should be applied in such a situation.

Roger L. Browdy
Partner
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Randall Svihla via Patentpractice
Sent: Wednesday, March 5, 2025 1:19 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Randall Svihla <rsvihla at nsiplaw.com>
Subject: Re: [Patentpractice] questions about new 'IDS size fee'

Hi, Bill

As someone has already answered, you were not required to pay an IDS size fee, and will never have to pay any IDS size fees in this application.  However, you need to file a written IDS size assertion stating that no IDS size is due each time you file an IDS.

I don't think the USPTO will automatically refund the IDS size fee you paid because the USPTO is not supposed to track the number of items that have been submitted.  See this FAQ in the quick reference guide someone else mentioned:

[cid:image001.png at 01DB8EA4.02AA5660]

So you need to file another written IDS size fee assertion stating that no IDS size fee was due, and request a refund of the IDS size fee under 37 CFR 1.26(a) as being paid by mistake.

Good luck.

Best regards,

Randall S. Svihla
NSIP Law
Washington, D.C.


From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of William Ahmed via Patentpractice
Sent: Wednesday, March 5, 2025 10:58 AM
To: For Patent Practitioners. This Is Not for Laypersons To Seek Legal Advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: William Ahmed <ahmed.william at ymail.com<mailto:ahmed.william at ymail.com>>
Subject: [Patentpractice] questions about new 'IDS size fee'

Dear List,
We have an application for which over 200 references were IDSed between it's 2023 filing date and Dec 31, 2024.

Question A --> If a new IDS is filed now, with 10 fresh references, does the USPTO require payment of the 'IDS size fee'? [i.e. the large number of refs were filed pre-Jan 19, 2025]

UPDATE -- we filed the IDS and paid the size-fee

Question B --> If the IDS size fee was NOT required [see Question A] and our IDS included the 'size-declaration' [along with the fee], will the USPTO refund the $800?

Many thanks,
Bill
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