[Patentpractice] RCE versus continuation?

[Valensa, Jeroen]

I dislike RCE’s in general – the fees are a big part of the reason.  But beyond that, I think that an RCE (and particularly a second RCE) is emblematic of inefficient prosecution.  My goal is to have the claims in shape for allowance by the final rejection.  The way to do that is to file the application with claims that are well-drafted, in light of the known prior art, to be able to make good arguments over the expected obviousness rejections.  I still want to be aggressive, particularly with the independent claims – a first-action allowance is not what I’m looking for.  But I don’t want to waste examination rounds trying to figure out what the actual scope of the invention should be.  Once you get that first non-final, you should have a good idea of the strength of the prior art on which the examiner will rely.  At that point, I’m willing to make the necessary claim amendments to overcome that art.  But I’d like to have the claims in such a shape that, were the examiner to go final with the same art, I’m willing to take those claims to appeal.  Sometimes there is a nuance to the examiner’s arguments that are only properly expressed in the final rejection, and an RCE may be necessary to make further refinements to the claims.  But in general, I like to have the claims in good enough shape by the time they are finally rejected that I am comfortable taking the arguments to the PTAB.

Quite often, if the case for patentability is well-argued in the appeal brief, the examiner will reopen prosecution anyways.  Sometimes you get better rejections back, but it will be a non-final so another opportunity to amend the claims if needed in order to overcome the art, before the examiner again goes final.  Sometime it’s a notice of allowance, when the examiner realizes that their arguments are not going to be  convincing to the PTAB.

Jeroen Valensa
Assistant General Counsel – Intellectual Property
[cid:image001.jpg at 01DC2BA6.DD728E30]<https://www.aosmith.com/>
11270 W Park Place
Milwaukee, WI 53224
phone: 414-359-4083
mobile: 414-915-9065
email: jevalensa at aosmith.com<mailto:jevalensa at aosmith.com>

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Subject: [Patentpractice] RCE versus continuation?


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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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