[Patentpractice] RCE versus continuation?

[Carl Oppedahl]

This is a very good point, thank you.

On 9/20/2025 8:55 PM, Randall Svihla wrote:
>
> The RCE will almost certainly be examined sooner than a continuation 
> application.
>
> Randall S. Svihla
>
> NSIP Law
>
> Washington, D.C.
>
> *From:*Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On 
> Behalf Of *Carl Oppedahl via Patentpractice
> *Sent:* Saturday, September 20, 2025 6:03 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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