RCE vs. Appeal: Three Considerations That Can Make All the Difference

July 19, 2017 LexisNexis IP Solutions

The patent process is anything but predictable. The road to issuance can be bumpy as new challenges arise and patent practitioners are forced to make important prosecution decisions. Often, these decisions come about when an examiner issues a final office action. It is then that a practitioner must decide between a Request for Continued Examination (RCE) or an appeal in order to keep the application alive. Many practitioners elect for an RCE based solely on the fees involved, but whether an RCE is actually the better choice requires the consideration of many factors.

  1. Know Your Examiner

It is important to remember that each examiner is unique, and looking over your examiner’s prosecution history can be helpful in deciding how to prosecute your application. Examiner-specific data analysis using software such as LexisNexis PatentAdvisor® can save you both time and money in prosecuting an application. For example, knowing your examiner’s overall application allowance rate can mean all the difference when deciding between an RCE and an appeal. If you have been assigned an examiner with a low allowance rate , it may be more advantageous to appeal to the Patent Trial and Appeals Board (PTAB) rather than to allocate resources to reconsideration by your examiner. Alternatively, if your examiner has high overall allowance rates, it may be worthwhile to pursue an RCE for another chance to convince your examiner that your application should issue as a patent. 

  1. Assumptions Can Be Costly, and So Can RCE's

Practitioners often prefer RCE’s because the appeal process has become synonymous with high costs and long delays. The price of appeal can be hard to justify since filing an RCE costs less than half as much as the combined filing fees for a Notice of Appeal and an Appeal Brief. However, the fact that a single RCE costs less in filing fees does not mean that an RCE will be effective or even that an appeal will be more expensive. By analyzing an examiner’s RCE statistics, you can determine how frequently RCE’s are used in prosecution with your examiner and how effective those RCE’s have been in the past. High allowance rates after RCE’s could mean that filing an RCE is a worthwhile prosecution strategy, but, if several RCE’s are usually required before allowance, then pursuing an RCE may end up being just as expensive as filing for appeal. Moreover, if there is a significant number of RCE’s in your examiner's backlog, then pursuing an RCE over an appeal may not even save you time. 

  1. An Appeal May Surprise You 

A patent examiner's appeal statistics may also give you valuable insight. Data showing that your examiner’s final office actions are frequently reversed by the PTAB may indicate appeal will be effective. When considered alongside your examiner’s unfavorable RCE statistics, you may decide that an appeal should be filed sooner rather than later. In some cases, you may even be surprised to find that the mere filing of an Appeal Brief is likely to result in quick allowance by your examiner, and that going through the entire appeal process is unlikely. 

Patent prosecution decisions are rarely straightforward. Developing an efficient prosecution strategy requires that you have the information you need to make informed decisions. PatentAdvisor™ provides you with the tools and data you need to make informed prosecution decisions that will save you time and money.

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