Is that Next RCE Really Going to Work?

Knowing when to give up on a patent application is one of the most critical questions facing for any patent applicant, whether they be an independent inventor or a large corporation. Resources are finite even for the largest corporations, and throwing good money after bad is not a strategy for success.

When you do not want to give up on a patent application filing an RCE can be an extremely attractive option compared with the cost and delay associated with filing an appeal to the Patent Trial and Appeal Board within the United States Patent and Trademark Office. The filing of the first RCE for a small entity costs $600, and the cost of filing a second or subsequent RCE for a small entity costs $850. These fees are double for large entities, and half as much for those that qualify as micro-entities. Filing an RCE also gives the applicant another two attempts, generally speaking, to convince the examiner that patentable claims are present in the application.

Filing an Appeal is a decision that many applicants simply forego at all costs. The cost of filing a Notice of Appeal is currently $400 for a small entity, double that for a large entity, and half as much for those that qualify as micro-entities. If you want an oral hearing that adds $650 for small entities, $1,300 for large entities and $325 for micro-entities. But the real cost of moving forward on appeal is the attorneys fees that will be encountered. According to the 2013 Economic Survey of the American Intellectual Property Law Association (AIPLA), the median attorney cost for preparing a brief is $4,500, and the median cost for those appeals that include an oral argument raises by another $4,100. Compare this with the filing of an RCE, which depending on the complexity of the technology will vary between about $2,000 to $3,500.

When faced with the decision regarding whether to file an RCE or file an Appeal, the desire to not give up and to hopefully obtain a patent can easily lead any application to elect to the file a Request for Continued Examination (RCE). This is true for the cost reasons already stated, but also because filing an RCE you will undoubtedly get treatment much faster than going on the appeal track, and there is always hope that additional time working with the patent examiner will yield patentable claims. Of course, sometimes filing that next RCE is going almost certainly accomplish nothing. Therefore, it is essential for applicants to understand the statistical realities, which will allow them to make strategic prosecution decisions that will be cheaper and more effective in the long run.

Take for instance Application No. 10/174,366. PatentAdvisor which provides extensive actionable prosecution data that can be analyzed to allow for strategic decision making, shows that the examiner assigned to this particular case on average requires 3.9 Office Actions between filing and allowance. Yet, in this particular application there have been 5 separate RCEs filed, and the applicant will soon be on the 12th Office Action. See the chart below:

NOTE: Not shown above is yet another RCE filing, the 5th, which was made several days ago.

Even with the increased cost of pursuing an appeal, that may have been a preferable and more cost effective strategy for the above application. For example, according to April 2014 USPTO data from the patent dashboard, the average length of time from filing to a decision by the Board is 86.3 months. While that remains unacceptably long, this application has already been pending for almost 144 months. Furthermore, had the applicant tried two RCEs and then appealed the money paid in attorneys fees for the additional RCE filings and Office Action responses would have easily covered the cost of the Appeal. Even if the applicant had tried three RCEs, which would have taken them to 9 Office Actions, the cost of Appealing would still have been less even if the applicant requested an oral hearing.

So how does this type of decision making happen? First, many times applicants and their representatives are not armed with this type of information. If you look at the PatentAdvisor data this application is screaming one of two things. After being pending for over 12 years it is time to either abandon the application or appeal the examiner’s decision to the Board.

But even if the applicant knew about this information there may be a desire to try and continue to work with the examiner given that this particular examiner, according to the data in PatentAdvisor, has an allowance rate of 53.4% (i.e., Allowed Cases/(Allowed Cases + Abandoned Cases)), while the Art Unit where this application is assigned has an overall allowance rate of only 31.6%. Therefore, it seems that this particular examiner is willing to issue patents and does so at a considerably higher rate than other examiners in the same Art Unit.

Still, at some point it can’t make sense to continue to filing RCEs. Armed with the knowledge that the average allowance occurs after 3.9 Office Actions it seems incredibly optimistic to file an RCE that will lead to a 12th Office Action.

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