While pondering other options, patent applicants should keep in mind 4 important considerations in decisions involving their inventions

In the November 2022 Inventors Digest, the USPTO told readers about inventors’ options if a patent examiner rejects a patent application. If a patent applicant receives a second or final rejection of his or her application, the applicant again has options.

An applicant may pursue a request for continued examination (RCE) to continue exchanges with the examiner. Or, an applicant may seek review of the examiner’s rejection before the Patent Trial and Appeal Board (PTAB) in an ex parte appeal (only one interested party).

In selecting an option, various considerations include costs, decision-makers, time to reach a result, and typical outcomes.

Costs. A patent applicant must pay USPTO filing fees to pursue either an RCE or an appeal. Additionally, the USPTO filing fees depend on the size of the entity making the filing, with costs lowest for a micro-entity (85 percent fee reduction) and highest for a regular-sized entity.

Presently, for a small entity (50 percent fee reduction), the fee is $544 for a first RCE and $800 for a second. There are several costs for an appeal, depending on how far the applicant takes the appeal.

For a small entity, the current cost for filing a notice of appeal is $336; the cost to forward the appeal to the PTAB after filing is $944; and the cost for an oral hearing is $544. Thus, comparing USPTO fees only, an appeal is more expensive than an RCE.

Decision-maker. An RCE will be handled by the same examiner who considered the original application. The examiner already has familiarity with the application and the issues involved.

An RCE essentially enables an applicant to “continue the conversation” with the examiner. But the applicant can present new evidence, new arguments, and may introduce new changes to the claims in effort to secure a patent grant.

An appeal will be decided by three PTAB administrative patent judges, who have technical and legal training and many years of experience in patent law. Many judges previously worked as examiners. The judges review the examiner’s rejection from a fresh perspective and determine whether that rejection should stand or be reversed.

In an appeal, an applicant cannot introduce new evidence or make changes to the claims. But the applicant, called an appellant before the PTAB, may raise a new argument in the introductory appeal brief (but not the reply brief) and, optionally, may appear at an oral hearing before the judges to answer questions that the judges may have about the invention and issues.

Timing. Once an RCE is filed, an examiner acts on the filing within 2.5 months on average. An appeal takes longer, with judges issuing a decision in 12-13 months on average.

If an applicant wants a faster decision from the PTAB, the applicant can request expedited review for a modest additional fee.

Outcome. After an RCE is filed, the examiner typically issues another rejection 64 percent of the time and an allowance 36 percent of the time. As a result, an applicant often may have to file multiple RCEs to reach an allowance.

On appeal, after the applicant files an appeal brief, about 30 percent of the cases are reopened by the examiner.

For more information about appeals, visit uspto.gov/patents/patent-trial-and-appeal-board/about-ptab/new-ptab.