[Patentpractice] RCE versus continuation?

[Randall Svihla]

We have not had much luck with Pre-Appeal Requests for Review.


From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of CHRISTOPHER WOOD via Patentpractice
Sent: Saturday, September 20, 2025 6:22 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: CHRISTOPHER WOOD <chriswood_phd at hotmail.com>
Subject: Re: [Patentpractice] RCE versus continuation?

Not sure if this has been mentioned already, but unless there is a complication like an IDS issue, I find the "USPTO's Pre-Appeal Brief Request for Review (Pre-Appeal Brief Conference Program) allows applicants to submit an abbreviated, five-page argument ahead of a full appeal. The program is designed to resolve issues more efficiently and cost-effectively by having a panel of examiners and supervisors review the arguments before a formal appeal brief is required."  It's a great cheaper way of dealing with a difficult Examiner as the patent app is independently looked at by special Examiner's (with the original Examiner in attendance.)  As stated, the  Pre-Appeal Brief limit is just 5 pages, so not a large amount of work.  From memory just requires the cost of filing a notice of appeal.

________________________________
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Carl Oppedahl via Patentpractice <patentpractice at oppedahl-lists.com>
Sent: Saturday, September 20, 2025 6:02 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Carl Oppedahl <carl at oppedahl.com>
Subject: [Patentpractice] RCE versus continuation?


Hello folks.  I just got done paying the fee for a second RCE in one of my clients' cases.   Ouch!  $2860 for a non-small entity.

I then went to the trouble to add up the filing fee, search fee, and exam fee that would have been paid in an ordinary continuation.  Looks like that adds up to $2000.

I note that the number 2000 is smaller than that number 2860.

Which got me thinking about the question of the subject line.  RCE or continuation?

I guess in most ways the RCE is the better path despite the need for handing over more money, right?

  *   Maybe the case has enough IDS references to be in IDS-size-penalty world.  In the continuation, an IDS size penalty would need to be paid.  The RCE saves having to pay that penalty.
  *   Maybe there are lots of excess claims in the case.  The RCE saves having to pay again for the excess claims.
  *   For a continuation, I would have to identify and upload spec, claims, abstract, and drawings.  Which among other things presents the risk that I will screw up and upload the wrong file or a wrong version of a file.  The RCE eliminates risk of my screwing this up, and saves the mouse clicks required for the uploads.
  *   For the continuation, to avoid the malpractice risks of DOCX filings, I would have to pay the $430 penalty.  The RCE saves me from having to pay that fee.
  *   Maybe enough years would have dragged on by now that the penalty fee for presenting a domestic benefit claim after so many years would kick in.  The RCE avoids that penalty.

What factors favor the continuation?  Well, one thing is, sometimes the client is not sure yet how the client wants to deal with the most recent rejection.  If so, then the continuation is ideal because you could (for example) intentionally do something to trigger a notice of some kind.  Put in a placeholder multiple-dependent claim and not pay for it, triggering a Notice to pay for the RCE.  Then maybe within two months, cancel the MDC and along with it, hand in the response to the most recent rejection.  (With the RCE it would have been required that the response accompany the RCE.)

Did I get the pros and cons right?  Are there other pros and cons that I missed?
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