Request for Continued Examination vs. Appeal
Why choose a Request for Continued Examination (RCE)?
A patent practitioner may choose to file an RCE for many reasons, but most often an RCE is used to reopen prosecution after a patent examiner issues a final office action. Even though a patent applicant may respond directly to a final office action with the hope of overcoming a patent examiner’s rejections, applicants are limited on the type and amount of changes they can make in their response. Significant but often necessary amendments or arguments are not allowed in responses to final office actions, and that includes amendments to patent claims, extensive arguments, and other changes that may require the assigned patent examiner to conduct additional prior art searches.
An RCE is often the best vehicle for keeping prosecution alive after a final office action. RCEs enable patent practitioners to make more significant changes and more compelling arguments in favor of patentability than they could by responding directly to a final office action – in that way, RCEs create a new life for patent applications. Of course, filing an RCE does have its price and certainly does not guarantee a granted patent, so it’s best to consider all the options.
Why choose an Appeal?
However, the fact that a single RCE costs less in filing fees does not mean that a Request for Continued Examination will be effective or even that an appeal will be more expensive. 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 a Request for Continued Examination over an appeal may not even save you time, and it definitely won’t save you any headache.
This is where data comes in. By analyzing an examiner’s RCE and appeal statistics, you can determine the best next step for your application.
1. Know Your Examiner
The new standard in patent examiner analytics, PatentAdvisor ETA™, is based on a complex algorithm that takes into account several sources of data and assigns a numerical value to each USPTO patent examiner.
One reason ETA is the most accurate and predictive metric available is because it factors in the examiner’s entire pending portfolio, not just granted and abandoned cases. The ETA metric is instantly identifiable, reflected as a color-coded range of numerical favorability with red being less favorable and green being most favorable.
2. An Appeal May Surprise You
3. Preventing Either May Be An Option
4. Know Your Team
The LexisNexis PatentAdvisor® patent analysis platform provides users with access to patent data about specific applicants and patent practitioners. Through PatentAdvisor™, you can consider the quantity and outcome of RCEs previously filed by your company or patent professionals to help you determine whether an RCE is the right choice in the present.
7 Day Trial
With your free trial, you will gain instant access to:
Examiner Search allows you to search by examiner name for a filterable, examiner specific dashboard of patent analytics, including rejection specific statistics, appeal statistics, prosecution statistics, interview statistics, a backlog of RCEs and timeline.
QuickPair easily replaces the USPTO Public PAIR by providing the most robust application details anywhere, including examiner timeline, examiner allowance rate and the average time and number of office actions to allowance.
PatentAdvisor, the first-ever data-driven patent strategy tool, provides a systemic approach to crafting an effective prosecution strategy. Understand why certain patent applications take longer than others to reach allowance—then use that knowledge to devise better patent prosecution strategies.