RCE Avoidance

Costs for patent prosecution continue to increase. One reason relates to the USPTO's progressive fees for filing a Request for Continued Examination (RCE). If the client is a large entity, the first RCE is $1,200, and second and subsequent RCEs are $1,700. These steep fees create a strong incentives for reducing RCEs as much as possible.

One way to reduce RCE filings is to find ways to overcome improper final rejections made by examiners through a properly filed petition. See a previous post that discusses some procedural oddities in how an applicant must proceed when challenging a final rejection as untimely.

Recognizing improper rejections can be difficult, since the applicant is typically focused on responding to the substance of the rejection and can often miss subtle deficiencies. One particularly common error that is overlooked by many applicants relates to deficiencies in a Section 101 rejection.  A recent example relates to a Section 101 rejection where the Examiner provided detailed reasoning for a first claim set (claims 1-12, method claims), and then simply rejected the second claim set (claims 13-20, system claims) asserting that the same reasoning applies. However, the two claim sets were in different categories (system vs. method) and included some different claim elements. A petition was timely filed and pointed out these deficiencies, including that Applicant properly traversed the rejection of claims 13-20 by pointing out that the rejection did not specifically address them. Below is an except from the successful petition in removing the finality of the rejection:

While there is some cost to the petition, strategic use by expert counsel should reduce the use of RCEs and save dollars and patent term in the end.