[Patentpractice] Question about First Action Final after RCE

Thu Mar 6 20:34:28 UTC 2025

I had this once about 20 years ago.  I talked to (I think it was Magdalen
Greenlief, then the editor of the MPEP.)  She said "Yup, that's what it
means."  I asked about futility and the like.  She said "No we want you to
file the amendment."  (No, we want your extension fees.  Forward progress
is not the PTO's business model.  I didn't say that.  That was back before
I became totally cynical--but I guess it was a major factor in getting me
to think that way.)  But this section of the MPEP has been revised about
3-4-5 years ago -- it might be different now.

On Thu, Mar 6, 2025 at 2:56 PM Roger Browdy via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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), 4
> th 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
>
> _____________________________________________
>
> *FisherBroyles, LLP*
>
> direct: +1 202-277-5198
>
> *roger.browdy at fisherbroyles.com <roger.browdy at fisherbroyles.com>*
>
> www.fisherbroyles.com
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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:
>
>
>
>
>
> 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> *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>
> *Cc:* William Ahmed <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
> --
> Patentpractice mailing list
> Patentpractice at oppedahl-lists.com
>
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>

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