RCE or Appeal: Balancing Flexibility Against Rising Costs
Increased RCE Costs May Make Appeals More Attractive
The USPTO has implemented substantial fee increases for Request for Continued Examination filings. The first RCE now costs $1,500 for large entities and $600 for small entities, representing a significant increase from previous fee levels. However, the financial burden increases for subsequent RCEs, with second and additional RCE filings requiring $2,860 for large entities and $1,144 for small entities.
These increased fees may dissuade Applicants from filing multiple RCEs when facing persistent rejections.
Appeal Process Offers Competitive Alternative
In contrast to filing RCEs, the appeal process presents a more cost-effective alternative for challenging examiner decisions. Filing a Notice of Appeal requires only $905 for large entities and $362 for small entities. Even when combined with the fee for forwarding the appeal to the Patent Trial and Appeal Board ($2,535 for large entities, $904 for small entities), the total appeal cost of $3,440 for large entities remains competitive with the price of two RCEs.
This offers a compelling strategy of appealing over filing requests for continued examination, particularly when facing rejections from a stubborn examiner.
Strategic Considerations for Prosecution Path Selection
When an examiner maintains rejections despite substantive responses, Applicants should carefully evaluate whether an RCE is likely to prove fruitful. In cases where the examiner appears to have misunderstood the invention, misapplied prior art, or taken an unreasonably narrow view of claim interpretation, appeal may offer both a more cost-effective and potentially more successful resolution path.
The appeal process provides the benefit of fresh eyes reviewing the application, with Patent Trial and Appeal Board members bringing different perspectives. This independent review can be particularly valuable when facing rejections that seem to reflect examiner bias or inadequate understanding of the technology.
Applicants should consider that the average time for the Patent Trial and Appeal Board (PTAB) to issue a decision on an appealed rejection is about 15 months.
Overcoming Reluctance to Appeal
Many practitioners traditionally viewed appeals as a last resort, preferring the collaborative approach of continued examination. However, the new fee structure should encourage practitioners to consider appeals as a legitimate strategy when facing questionable rejections. The appeal process is not an admission of failure but rather an effective tool for obtaining independent review of examiner decisions.
Appeals can be particularly effective when the rejection relies on questionable combinations of prior art, mischaracterizes the claimed invention, or fails to properly consider arguments already presented. In such cases, the structured briefing process of an appeal may provide a more effective forum for presenting technical arguments than continued back-and-forth with the original examiner.
Practical Implementations for Patent Strategy
The decision between RCE and appeal should consider factors beyond pure cost, including timeline requirements, strength of the examiner's position, and the client's business needs. However, the new fees make appeal an increasingly attractive option, particularly for applications where the examiner's position appears vulnerable to challenge.
The USPTO's fee restructuring has created a compelling economic case for use of the appeal process. Rather than viewing appeals with trepidation, practitioners should embrace them as a tool for challenging questionable examiner decisions. The independent review provided by the Patent Trial and Appeal Board, combined with the competitive cost structure, makes appeal an increasingly strategic choice in modern USPTO practice.