RCE vs. Appeal

June 30, 2014 LexisNexis IP Solutions

rce vs. appeal - which is costlier?Receiving a notice from the U.S Patent and Trademark Office that a patent application has been rejected is obviously disappointing. More importantly, however, it presents the patent applicant with an important decision between two long-standing options: attempting to rebut the patent examiner’s rejection rationale by filing an RCE, or filing an appeal to the Patent Trial and Appeal Board.

Of these, RCEs are clearly more accessible to more patent applicants. Even with RCE resolutions currently taking about two years, the RCE process still moves faster than the appeals process and is encumbered by few of the latter’s associated legal expenses. There is also no limit to the number of RCE applications one can file.

In a recent post at IPWatchdog.com, however, patent attorney Gene Quinn argues that in many situations, filing an RCE, and particularly multiple RCEs, is a case of false economy.

In Quinn’s view, an applicant’s choice to file an RCE often is rooted in the perception that the associated fees, which can be as little as $300 for an initial RCE by a small inventor, will cost less than retaining an intellectual property attorney to prepare their case for the formal appeals process.

Quinn cites data from the American Intellectual Property Law Association in pricing the latter at about $8,600. That seems like a large cost differential, but Quinn points out that the RCE process gets more expensive for bigger companies, particularly on second and subsequent RCE filings. With a cost of up to $1,700 per filing, Quinn believes applicants need to know when it is time to stop trying to force the issue via RCE and entrust a patent attorney with the complete, independent review that the appeals process can provide.

The time it takes for the USPTO to take initial action on an applicant’s RCE is on a steady rise. In November 2012, an applicant could expect an office action in response to their RCE in about 4.4 months. According to statistics published by the USPTO, that figure had nearly doubled to 8.5 months by May 2014.

Even though the USPTO has begun to make headway against the RCE inventory, it is still seeking ways to further reduce the volume of incoming RCEs. To that end, a pilot program began in May 2013 and was initially slated to end on Sept. 30, 2013. It was extended for one year and now will run through Sept. 30, 2014. The After Final Consideration Program 2.0 (AFCP 2.0) process allows rejected patent applicants to respond to a final rejection without filing a full RCE and gives patent examiners additional time to consider the applicant’s response.

As its name suggests, AFCP 2.0 is the second iteration of the program, which first ran in 2012. It seems reasonable to expect that a successor to AFCP 2.0, as either a further-revised pilot program or a permanent process, will be announced after AFCP 2.0 ends.


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