Patent Law Practice Center

Making the Decision to Appeal vs. Another RCE

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.

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