[Patentpractice] RCE versus continuation?

Mon Sep 22 15:08:48 UTC 2025

I agree with Jeroen.  I file very few RCE's.  There are three ways to
handle a final OA (if teh Rule 116 paper doesn't get over the hump) --
     -- petition to withdraw premature final (80%+ successful)
     -- appeal (60% success at Pre-Appeal, and then after appeal brief,
maybe 50% of the time the examiner gives up without an Examiner's Answer)
     -- RCE
I probably do all three more or less equally.  (That is, I RCE only about
1/3 of finals.)   To get high yield, both the petition and the appeal
require setup in the first reply to first OA.  Another email for another
day.

The biggest reason for RCE's is examiners that play the "drip drip drip"
game of lousy prior at, then a little better, then a little better.  I
don't know of much to do about that -- does anyone have a suggestion?

On Mon, Sep 22, 2025 at 10:57 AM Valensa, Jeroen via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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
>
> <https://www.aosmith.com/>
> *11270 W Park Place*
>
> *Milwaukee, WI 53224*
> phone: 414-359-4083
> mobile: 414-915-9065
>
> email: jevalensa at aosmith.com
>
>
>
> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On
> Behalf Of *Carl Oppedahl via Patentpractice
> *Sent:* Saturday, September 20, 2025 5:03 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?
>
>
>
> This message has originated from an *External Source*. Please use proper
> judgment and caution when opening attachments, clicking links, or
> responding to this email.
>
> 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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> Patentpractice at oppedahl-lists.com
>
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>

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