I just got done paying the fee for a second RCE in one of my clients’ cases. Ouch! $2860 for a non-small entity.
I then went to the trouble to add up the filing fee, search fee, and exam fee that would have been paid in an ordinary continuation. Looks like that adds up to $2000.
I note that the number 2000 is smaller than the number 2860.
Which got me thinking about the question of the subject line. What is smarter to use — RCE or continuation?
I guess in most ways the RCE is the better path despite the need for handing over more money, right? Here are some reasons why an RCE might be better than a continuation:
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- Any IDSs that had been filed in the parent case would need to be filed again in the continuation case. This need does not arise in the RCE.
- Any references that the Examiner cited in the parent case (in an 892) would need to be disclosed in an IDS in the continuation case. This need does not arise in the RCE.
- Any time you are filing an IDS, you are forced to do IDS-size counting and calculations to see whether an IDS size penalty needs to be paid. This counting and these calculations are not needed for an RCE.
- In the continuation, an IDS size penalty may need to be paid. The RCE avoids having pay that penalty.
- Maybe there are lots of excess claims in the case. The RCE saves having to pay again for the excess claims.
- For a continuation, I would have to identify and upload spec, claims, abstract, and drawings. Which among other things presents the risk that I will screw up and upload the wrong file or a wrong version of a file. The RCE eliminates risk of my screwing this up, and saves the mouse clicks required for the uploads.
- For the continuation, to avoid the malpractice risks of DOCX filings, I would have to pay the $430 penalty. The RCE saves me from having to pay that fee.
- Maybe enough years would have dragged on by now that the penalty fee for presenting a domestic benefit claim after so many years would kick in. The RCE avoids that penalty.
- The RCE is likely to get examined much sooner than the continuation.
What factors favor the continuation? Well, one thing is, sometimes the client is not sure yet how the client wants to deal with the most recent rejection. If so, then the continuation is ideal because you could (for example) intentionally do something to trigger a notice of some kind. Put in a placeholder multiple-dependent claim and not pay for it, triggering a Notice to pay for the RCE. Then maybe within two months, cancel the MDC and along with it, hand in the response to the most recent rejection. (With the RCE it would have been required that the response accompany the RCE.)
(Note that if your pending US patent application is a design application, the RCE is not available to you. The three-letter initialism that is available to you in a design case is the CPA, not the RCE. )
Did I get the pros and cons right for RCEs versus continuations? Are there other pros and cons that I missed? Please post a comment below.