Even if you already know in general what after-final patent prosecution involves and when it is appropriate to appeal , sometimes the decision of whether to appeal is not clear-cut. For instance, you may have a fundamental disagreement with the Examiner and believe that you have a strong chance on appeal, but the Examiner may also have agreed to allow the case with a narrowing amendment, or at least to withdraw the rejections of record. At this point, the cost/benefit analysis can become somewhat complex. What follows are some practical appeal considerations.
Time
Between submission of the briefs and the Board’s decision, an Appeal typically takes about two years from start to finish. This is a length of time during which you will not have a patent to enforce. There is always the possibility that prosecution will be reopened, but by the time you find out, you typically will already have incurred the expense and delay of preparing and filing an Appeal Brief. Therefore, if you need an early patent (for example due to an infringing product), it may be best to file an RCE if allowance is likely.
With the use of a request for a pre-Appeal Brief conference (discussed here ), it is possible to file a Notice of Appeal, receive a decision on whether prosecution will be reopened, and then file an RCE if it is not. If there appears to be a clear error, this allows you to relatively quickly have that error corrected, or else file an RCE and proceed to the quick allowance you can get.
Note that, if it becomes necessary, an RCE can be filed at any point in the appeal process before a decision is reached.
Expense
An Appeal carries government fees of $510 for small entities, plus the cost of preparing and filing an Appeal Brief and Reply Brief. This can be a hefty sum, close to $2500 even for an inexpensive attorney. An RCE, on the other hand, carries $405 in government fees and requires submission of an amendment, which may cost as much as an ordinary Response. Thus, the cost would be closer to $1500. However, an appeal leads to a final resolution of the allowability of all claims (you can appeal a Board decision, but that procedure is very expensive ($10,000 and up, up, up) and therefore rare).
So in the short run, an RCE is the cheaper option. But in the long run, it may be more expensive. If the Examiner finds new prior art or otherwise decides to reject some of your claims, it may be necessary to prepare and submit additional responses. If you can only reach an agreement with the Examiner on some of the claims you want, it may be necessary to file a continuation application to attempt to get a patent for the remaining claims. So, unless an RCE will result in allowance of all the claims you are going to want (which is not unusual), it is likely to be a more expensive option in the end.
Finality
When you file an RCE, the Examiner can always give you a new rejection, regardless of what they may have told you in an interview or Office Action. Sometimes you may go in circles with an Examiner, always seemingly one RCE away from allowance.
One advantage of an appeal is that a decision allowing your claims is final. There is almost no chance that a new rejection will be issued once the Board has indicated claims to be allowable. Although an Examiner can reopen prosecution after an Appeal Brief is filed, but before the briefs get to the Board (and indeed this happens frequently), the Applicant always has the option of putting the case right back into appeal without paying any additional fees. That is why an appeal is frequently an excellent choice when you feel that an Examiner is giving you “the runaround.”
Continuation practice
If the Examiner offers to allow your application with a narrowing amendment, accepting that offer does not mean you have to necessarily give up on the possibility of broader claims. If the narrowed claims are still useful to you, you can accept them and allow them to issue as a patent. Before the final publication of that patent, you can file a continuation application.
This application gets the priority date of the original application and has the same Specification. However, you can write new claims for it, or pursue claims from the original application that were not allowed. Of course, the new claims must be supported by the original specification. Continuation applications are usually considerably less expensive to prepare than original applications. These applications generally are taken up by the same Examiner as the original application and in a shorter amount of time, typically 6 months to 1 year.
When an issued patent is needed, it is common practice to accept the claims allowed by the Examiner and pursue further claims in a continuation application. In applications with some allowed claims, filing an RCE followed by a continuation is probably more common than an appeal, which as noted can tie up the claims for years.
Summary
When deciding between an RCE and an appeal, you will want to weigh each of these considerations. If you need a patent soon, have a reasonable examiner, and have the opportunity to take some useful allowable claims, an RCE is probably more appropriate. If you have been around the block with the Examiner, are uncertain whether the Examiner will agree to allow claims, and/or do not need an issued patent with any immediacy, an appeal may be the better option.
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