Better to use an RCE or a continuation?

(Revised to include many excellent thoughts from readers.)

One of the nicest things about working with sophisticated patent firms in other countries is that they will ask questions about US practice that make me try to collect my thoughts about particular points of US practice.  I have a pending US case that has received an Advisory Action.  Instructing counsel, located in Europe, asked just now whether I thought it would be better to file an RCE or a continuation application in that case.  In this blog article I will try to list some of the factors that I think might nudge an applicant one way or the other on such a judgment call.

First some context.  The alert reader realizes that it must be we are talking about a utility case, not a design case.  (If it were a design case the corresponding judgment call would be whether to file a CPA or a continuation.)  

Cost.  The government-fee cost of the RCE will as a general matter be non-identical to the government-fee cost of the continuation.  Consider a case that has two hundred pages, and has thirty claims of which five are independent and in which the MDC (multiple dependent claim) fee has been paid.  A continuation of this case might well incur not only a filing fee and search fee and and exam fee, but also an excess-pages fee and an excess-total-claims fee and an excess-independent-claims fee as well as the MDC fee.  In contrast the RCE would incur only the RCE fee.

Second or n^th RCE.  We also must keep in mind that a second or n^th RCE in a particular case incurs a much larger government fee than the first RCE in a particular case.

Some examples of government fee costs.  Blog reader Michael Nye writes:

Your discussion of costs suggests how close the PTO fees are, but I thought I’d provide a numerical example.

If you are electronically filing a vanilla application (fewer than 133 pages and no more than 3/20 non-multiply-dependent claims) for a small entity, the filing fees are $785 ($75+$330+$380).

Meanwhile, the growth of the 2^nd RCE fee means that the second RCE is now $950 for that small entity. So you get a 17% discount for filing the continuation rather than an RCE.

I chose small entity because it’s a slightly more stark example. For a non-small entity, you’re looking at a 9% discount for filing the continuation ($1720 vs the second RCE fee of $1900).

He’s right about these numbers.  

Whose desk the case will land upon.  With an RCE there is absolutely no question the case will land again on the desk of exactly the same Examiner as the Examiner who was handling the case before the RCE was filed.  With a continuation, depending upon the outcome of the classification process, it is conceivable that the case could end up in a different Art Unit and thus, by definition, on the desk of a different Examiner.  The USPTO computer systems are programmed, however, with Business Process Rules (BPRs) that usually try very hard to send any divisional or continuation or CIP to the exact same Examiner as the Examiner in the parent case.

The classification process focuses mostly on the claims.  If the claims in a continuation were quite different from the claims in the parent case, this is a factor that might lead to different classification and thus to a different Art Unit.

Having said all of this, just because the BPRs and the classification lead to a case being dropped into a particular Art Unit does not mean the case will necessarily stay there.  Individual Technology Centers have procedures by which the head of an Art Unit can try to get a case kicked to some other Art Unit within that Technology Center.  And the USPTO has a procedure by which the head of an Art Unit can try to get a case kicked to some other Art Unit outside of that Technology Center.

But the main point here is that with a continuation, there is some chance, albeit not necessarily a strong chance, of getting a different Examiner.  With an RCE there is almost no chance of getting a different Examiner.

Loss of pre-AIA status.  Suppose you have an “old law” case, by which we mean a case in which the patentability is going to be determined by reference to Sections 102 and 103 the way they were before the AIA happened.  With such a case, if you file an RCE, then there is no risk, none whatsoever, that TYFNIL a court might say that you crossed over the line and ended up with a “new law” case simply because you filed an RCE.  By definition you cannot add new matter by filing an RCE, which means there is no new matter to accidentally claim (which would convert your case to a “new law” case). 

In contrast, any time you have an “old law” case and you file a continuation, you have to be constantly on guard about putting risk factors into the file wrapper that could lead to a court TYFNIL saying that  you crossed over the line and ended up with a “new law” case.  Yes, in the continuation if you are smart you will “age” your preliminary amendment so as to force a clear record during prosecution that the preliminary amendment did not add new matter.  But if you “age” your preliminary amendment and a year later during examination the Examiner refuses to enter the preliminary amendment (because the Examiner thinks it adds new matter) then you are stuck with a case in which your preliminary amendment did not get entered.

Risk of later being accused of having filed a CIP.  Any time you file a continuation, there is the risk that during examination the Examiner might reach the view that it was really a CIP.  If so, then you have to try to figure out whether this is a problem, and if it is, what to do about it.  Not only that, even if the Examiner did not say it was a CIP, maybe TYFNIL your adversary may say that they think it is a CIP.  And this could inject uncertainty into the litigation.

In contrast if you file an RCE, you are safe against either of these risks.

Who you gonna call?  If your parent case is a 371 case, then for many things that you might need help with, you can call USPTO’s PCT Help Desk at +1 571 272 4300.  If you file an RCE, you preserve this situation.  On the other hand if you choose the continuation path, then you would no longer have the PCT Help Desk to turn to, and you would instead only have the Application Assistance Unit at +1 571 272 4000.  I hear from many practitioners who say they greatly prefer calling the former to calling the latter.

Restriction standard.  There are two standards for restriction at the USPTO — distinct-invention and unity of invention.  Many practitioners say they feel they are less at risk of an abusive restriction if the latter standard is applicable.  If your parent case is a 371 case, then the applicable standard for restriction is the unity of invention standard.  Filing an RCE keeps this standard in place.  Filing a continuation would relegate you to the distinct-invention standard.  

Loss of “special” status.  Your case might be “special”, perhaps due to poor health of one of the inventors.  If so, then an RCE preserves the “special” status without your having to do anything about this.  On the other hand if you select the continuation path, you would have to start all over again with a petition to ask for special status due to poor health of an inventor, and this might take many months to be granted, and then might take many months for the Examiner to take up the case even though it is nominally “special”. 

This issue could also arise in a case that is special due to the age of an inventor, but EFS-Web has an auto-granted petition for age-related specialness, so hopefully this would get the continuation case back on a special docket fairly promptly.

Avoiding drawing unwanted attention to differences in the child case.  When I was first in practice, a long time ago, the USPTO rule was that to file a continuation you were obligated to start by filing an exact copy of the parent case, and then you were obligated to use amendment practice to make a very clear paper record as to what was the same and what was different in the child case.  The idea, I always imagined, was twofold:

• to assist the Examiner in arriving at a view as to whether or not new matter was being added (meaning that the Examiner was going to have to decide whether to force the applicant to call it a CIP), and
• to reduce to a minimum that an otherwise inattentive Examiner would snooze through it and fail to notice that the applicant was trying to slip some new matter into the case without the Examiner noticing.

But some years ago the USPTO amended the Rules for filing continuations to eliminate the requirement of exact-copy-plus-amendments.  This means that nowadays you can file your continuation as simply a fresh application with brand-new specification, claims, abstract and drawings.  Nothing requires the applicant to particularly point out where the words are the same or where they are different.  Nothing requires the applicant to particularly point out where the drawings are the same or where they are different.  

This permits the applicant to file a continuation that is a “clean” new patent application. TYFNIL if an adversary wishes to try to get a court to rule that the case was really a CIP, the adversary will have to sit down and manually compare the child and parent cases, proceeding line by line through the two documents to try to spot the differences.  

But it is not only the situation at litigation time, it is also the situation at examination time that might be important to think about.  If you file an RCE, there is no choice about it but that the file wrapper will be shining a bright spotlight at any amendments.  The Examiner’s attention will naturally be drawn to those amendments.  Likewise if you happen to choose to do your continuation as exact-copy-plus-aged-amendments, likewise the file wrapper will be shining a bright spotlight at the amendments, and the Examiner’s attention will naturally be drawn to the amendments.   (You might choose to do exact-copy-plus-aged-amendments because of the “old law” situation mentioned above, or you might choose to do it because you want to eliminate the risk that TYFNIL you will be accused of having filed a CIP.)

The main point here is that the practitioner may feel that the client’s interests are best served by avoiding drawing attention to what ink-on-the-page is the same in the child case and in the parent case.  Even if the substantive content of the parent and child cases is identical, still the ink-on-the-page might be very different.  In a continuation that is filed as a “clean” spec, claims, abstract and drawings, the practical outcome is that one will have minimized the extent to which attention is unnecessarily drawn to what is the same and what is different.

Preserving or losing Patent Prosecution Highway status.  Blog reader Daniel Juffernbruch points out, correctly, that this RCE-or-continuation decision interacts with PPH.  Suppose for example that your parent case is on the Highway and you want to preserve Highway status.  Then the easiest way to do this is the RCE, because a case that is on the Highway does not lose Highway status from the filing of an RCE.   

In contrast, following the continuation path means you have a fresh patent application that will not be on the Highway unless you do something to put it there.  So suppose the applicant actually wanted to get off the Highway, perhaps because of some changed business circumstance.  The continuation is the perfect way to make that happen. 

Recall that if a case is on the Highway, then the applicant is forbidden from amending claims in a way that strays beyond “sufficient correspondence” with the claims that were treated favorably in the Office of Earlier Examination.  If an RCE is filed, then the prohibition against such straying remains in place.  In contrast, if a continuation is filed, then the applicant may freely amend claims with no requirement of “sufficient correspondence”.

If you choose the continuation path, this does not mean you cannot get back onto the Highway.  Assuming the newly filed claims “sufficiently correspond” then it is just a matter of a few mouse clicks to get the continuation onto the same Highway that the parent case was on.

Time to first action.  Blog reader Gudrun Draudt points out (correctly) that time to first action might be much longer for a continuation (perhaps years, depending on the backlog in the Art Unit) while an RCE might be taken up in just a few months.

Having said this, in my experience if you file a continuation, sometimes you can make a quiet phone call or two to an Examiner and it will prompt the Examiner to take the case up sooner than it would normally get taken up.

The “walking corpse” problem.  Listserv reader Jeffrey S. Kapteyn points out that if you have a 371 case in which the inventor’s declaration has not yet been filed, filing an RCE will make your case into a “walking corpse“.   You can avoid that problem by picking the continuation path or somehow managing to get the inventor’s declaration signed and filed.

Other ways of dealing with a Final Rejection.  This blog article focuses particularly on two ways of dealing with a Final Rejection, namely an RCE or a continuation.  Listserv reader Rick Neifeld points out, quite correctly, that there are many other things an applicant might do other than an RCE or a continuation.  These other paths might include:

• AFCP, or
• an ex parte appeal, or
• a pre-appeal-brief conference

I have a web page where I discuss some of these options.

How things might look to a third party.  Thoughtful reader Paul Kay says:

It may also be important to take into account how the client’s portfolio will appear to the persons who may be interested in it. While a competent attorney performing due diligence may well have the sophistication to understand the history of the portfolio, someone with less knowledge may, at least initially, be put off by the presence of multiple abandoned applications.

Please post a comment.  Discussed above are factors that I think might influence a practitioner’s choice as between an RCE or a continuation.  Can you suggest or identify other factors?  Please post a comment below.  Do you have thoughts about the factors discussed above?  Please post a comment below.