Knowing when to give up on a patent application is particularly important for any patent applicant, but when is enough really enough? When should a patent practitioners advise the client to either walk away or file an appeal? Financial resources are limited even for the largest corporations, and throwing good money after bad is not a strategy for success, or a recipe for keeping your clients happy.
When you do not want to give up on a patent application, filing a request for continued examination (RCE) pursuant to 37 CFR 1.114 can be an attractive option compared with the cost and delay associated with filing an appeal to the Patent Trial and Appeal Board (PTAB). The filing of the first RCE for a small entity costs $600, and the cost of filing a second or subsequent RCE for a small entity costs $850. Those amounts are doubled for large entities. But filing an RCE also gives the applicant two more bites at the apple in order to try and convince the patent examiner to allow at least some claims. That is, of course, provided that the same rejection cannot be made in the RCE. If the same rejection could be made in the RCE, then the first action could be made final. Assuming you make a proper submission, which includes, but is not limited to, an information disclosure statement; an amendment to the written description, claims, or drawings; new arguments; or new evidence in support of patentability, you should get at least two additional office actions.
Filing an Appeal is a decision many applicants will not make. The cost of filing a Notice of Appeal is currently $400 for a small entity, double that for a large entity. If you want an oral hearing, that adds $650 for small entities, $1,300 for large entities. But the real out-of-pocket costs associated with appealing is the attorneys’ fees that will be charged. According to the 2013 Economic Survey of the American Intellectual Property Law Association (AIPLA), the median attorney fee for preparing a brief is $4,500, and the median cost for those appeals that include an oral argument rises by another $4,100. Compare this with the filing of an RCE, which depending on the complexity of the technology, will vary between about $2,000 to $3,500.
When faced with the decision regarding whether to file an RCE or file an Appeal, the desire to not give up and to hopefully obtain a patent can easily lead any applicant to elect to the file a Request for Continued Examination (RCE). This is true for the cost reasons already stated, but also because an RCE will undoubtedly get treatment much faster than going on the appeal track, and there is always hope that additional time working with the patent examiner will yield patentable claims. Of course, sometimes filing that next RCE will accomplish nothing.
PatentAdvisor, which provides extensive actionable prosecution data that can be analyzed to allow for strategic decision making, shows examiner data. One of the pieces of data available is the number of Office Actions an examiner typically requires to get to a Notice of Allowance. They also show a distribution. You might see that an examiner, for example, averages 4 Office Actions to get to a Notice of Allowance, and that there is a steep drop-off, to the point where by the 6th Office Action, there is near zero percent chance that the examiner will issue a Notice of Allowance.
According to February 2015 USPTO data from the patent dashboard, the average length of time from filing to a decision by the Board is 88.6 months. While that remains unacceptably long, it is not unheard of for applications in some technology spaces to be pending upwards of 120 months. If you know you are working with an examiner that is extremely unlikely to issue anything after the conclusion of 4 Office Actions, then why would you file a second RCE? If you are willing to keep the application pending for many years filing RCE after RCE, why not move to file an appeal sooner rather than later?
Armed with examiner-specific knowledge, one can make better determinations about whether to file a subsequent RCE or just move to appeal. If you are working with an examiner that does not have a track record of issuing patents after the first or second RCE, filing a third, fourth, fifth or even sixth RCE doesn’t make a lot of sense. The money and time spent on the third through sixth RCE would be roughly equivalent to the money and time spent on an appeal, and you would get a fresh look at the case from the Board.
Tags: appeal, patent, Patent Office, patents, PTAB, RCE, USPTO
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