RCE or Appeal? That is the question

The USPTO significantly increased the fees for requests for continued examination (RCE) this year, presenting applicants applying for patents in the United States with new options and strategic opportunities, balancing flexibility with cost.

RCE fee increase: Appeals become more attractive

Under current USPTO regulations, the official fee for a first-time RCE application is $1,500 for large entities and $600 for small entities, a significant increase from previous fees. Subsequent RCE applications will incur higher fees, at $2,860 for large entities and $1,144 for small entities.

Such a substantial increase in RCE official fees will create significant obstacles for applicants to submit RCE requests multiple times.

The Appeals Process: A More Competitive Alternative

Compared to filing an RCE, the appeal process has become a more cost-effective option for challenging and contesting an examination decision. Under current regulations, the fee for filing an appeal is only $905 for large entities and $362 for small entities. Even when the fee for referral to the Patent Trial and Appeal Board (PTAB) is added—$2,535 for large entities and $904 for small entities—the total cost of the appeal is $3,440, comparable to the cost of two RCEs.

This presents an attractive strategic option for applicants, particularly when faced with a recalcitrant examiner, who may prefer to appeal rather than file a request for continuance of examination.

Strategic considerations for selecting search paths

If the examiner still upholds a rejection, the applicant can carefully evaluate whether an RCE is likely to be fruitful. In cases where the examiner may have misunderstood the invention, misapplied prior art, or interpreted the claims too narrowly, an appeal may be a more cost-effective and potentially more successful path to resolution. The appeal process offers the benefit of a fresh perspective, with PTAB members bringing diverse perspectives. This independent review is particularly valuable in cases where the examiner's rejection reflects bias or a lack of understanding of the technology.

Applicants should consider that it takes an average of approximately 15 months for the PTAB to issue a decision on an appeal.

Application of patent strategy in practice

When choosing RCE or appeal, applicants should not only consider the cost, but also consider time, the examiner's position, and the needs of the client.

The USPTO's fee restructuring creates more options for applicants using the appeals process. The independent review and competitive cost structure provided by the PTAB make appeals an increasingly strategic option in US patent practice.