35 U.S.C. · Part II · Chapter 12, Examination of application

35 U.S.C. 132: Notice of rejection; reexamination

In plain English

Section 132(a) requires the USPTO to tell the applicant about every rejection, objection or requirement, with the reasons and with whatever information and references will help the applicant decide whether to continue. If the applicant keeps going, with or without amendment, the application is examined again. That is the statutory basis for the office action and reply cycle.

The same subsection contains one of the most important limits in prosecution: no amendment may introduce new matter into the disclosure. Anything added to the claims, the description or the drawings after filing must have support in the application as originally filed. If it does not, the examiner will object to the amendment and reject claims that depend on it under section 112(a).

Section 132(b) created the request for continued examination (RCE). After a final rejection, or after allowance, the applicant can pay a fee and submit a reply, and the examiner will reopen prosecution in the same application instead of the applicant filing a continuation. RCEs are governed by 37 CFR 1.114.

Annotation by Raj Sutariya, Co-founder, PatentAssist.ai. General information, not legal advice; the statute below governs.

Text of 35 U.S.C. 132

Current text, quoted from the official United States Code.

(a) Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application; and if after receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be reexamined. No amendment shall introduce new matter into the disclosure of the invention.
(b) The Director shall prescribe regulations to provide for the continued examination of applications for patent at the request of the applicant. The Director may establish appropriate fees for such continued examination and shall provide a 50 percent reduction in such fees for small entities that qualify for reduced fees under section 41(h)(1).

Key cases

In re Jung, 637 F.3d 1356 (Fed. Cir. 2011). Section 132 is violated only when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection. The prima facie case is a procedural tool that shifts the burden of going forward to the applicant.

Practical notes

Reply to every ground in the action. Under 37 CFR 1.111(b) a reply must distinctly and specifically point out the supposed errors and address every objection and rejection; a reply that skips one can be treated as non-responsive. If a rejection is too vague to answer, say so in the reply and ask for a complete statement of reasons under section 132.

The time to reply is set in the action, usually 3 months, and extendable to the 6-month maximum in section 133 by paying extension fees. Our office action guide has the current extension fees and the reply checklist.

At the time of writing the standard RCE fee is $1,500 for the first request and $2,860 for later ones (37 CFR 1.17(e)). An RCE resets the finality of prosecution, but it also reduces patent term adjustment, because time spent in continued examination is not counted toward the 3-year pendency guarantee under section 154(b)(1)(B).

Related rules and guidance

37 CFR: § 1.104, § 1.111, § 1.113, § 1.114, § 1.116, § 1.121, § 1.133
MPEP: 706, 707, 714, 2163