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.

Filing an RCE with a substantive amendment to the claimed invention re-opens prosecution.  The Examiner will reconsider the case in light of your amendments, perform a new search if necessary, and allow your case or give you a new Office Action and new six month period for reply. Typically such an Office Action will be non-final, giving you an additional opportunity to argue the case and make amendments if necessary.  For a small entity, an RCE carries a $405 government filing fee.  For large entitites (over 500 employees and not a University) the cost is doubled.

Filing a Notice of Appeal costs $255 for a small entity and gives you two months to prepare and file an Appeal Brief.  This time period can be extended up to six months with escalating extension fees.  The Appeal Brief must be prepared in accordance with exacting requirements under the Manual of Patent Examining Procedure (MPEP) and is therefore costly.  A typical charge might be 1.5 to 2 times the cost of a Response.  Filing the Appeal Brief also carries a government fee of $255 for small entities. No amendments or new evidence can be submitted with the Appeal Brief.

After the Appeal Brief is filed, the Examiner will have a conference with his Supervisory Patent Examiner and with a technical expert and they will decide to either reopen prosecution or submit an Examiner’s Answer to the Board.  If the Examiner reopens prosecution, your case will either be allowed or you will receive a new non-final Office Action and a new six-month period to reply.  The Examiner will reopen prosecution if your arguments are persuasive, if there are mistakes the Examiner needs to correct, or if the Examiner feels that additional rejections should be made.

It is also now possible to request a pre-Appeal Brief conference when you file your Notice of Appeal.  An Examiner’s conference will then be conducted prior to filing of the Appeal Brief.  If the Patent Office decides to go forward with the appeal, you get the normal two months from the filing of the Notice of Appeal or one month from the date of the decision to go forward, whichever is later, to file a brief.  This is a good option when there is an obvious error, as in most cases prosecution will be reopened and you will save the expense of an Appeal Brief.

When the Examiner reopens prosecution, you have the option of re-entering the appeal process without paying an additional fee by filing another Notice of Appeal, or of responding to the new Office Action as normal. If you re-enter appeal, you file another brief, without paying another fee, that addresses any new rejections and the Examiner again has a conference and decides whether to re-open prosecution or enter an Examiner’s Answer.

If the Examiner submits an Examiner’s Answer, you get a non-extendable two month period in which you have the option of filing a Reply Brief in response to the points raised in the Examiner’s Answer.  A Reply Brief does not have all the formal requirements of an Appeal Brief and is typically about half the cost to prepare, or less.

Finally, all the briefs are forwarded to the Board of Appeals.  The Board consists of Administrative Patent Judges (APJs), typically drawn from the Examiners’ ranks.  They are generally very knowledgeable and are given enough time to fully address each Appeal.  Typically, approximately a year elapses between the time the briefs are forwarded to the Board of Appeals and the time that your appeal is considered.  A panel of three APJs will evaluate the briefs and issue a decision either affirming the Examiner’s rejections, reversing them, or affirming-in-part. If the decision is adverse, you have the option of filing a Request for Reconsideration.

If some claims are allowed, the application will be returned to the Examiner for final processing.  If only some of the claims are allowed, you can amend the application to accept issuance of a patent including the allowed claims.

If some or all claims are rejected, you can appeal the decision either to a Federal District Court or to the Court of Appeals for the Federal Circuit.  Either is a costly option.  Most appeals end at this point.  If all the claims are rejected and you do not choose to appeal further, your case will be abandoned.  Appeals to District or Circuit Court are another rich topic and will be covered in a future post.