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. (The exception being if the practitioner is willing to rely upon MPEP 609.02.) 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. (The exception being if the practitioner is willing to rely upon MPEP 609.02.) 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.
- In the continuation, the filer will have to set a docket to check to make sure the Examiner considers the IDS. The RCE avoids this.
- In the continuation, the filer will have to watch to see if the Examiner “lines through” anything in the IDS once it is considered. The RCE avoids this.
- 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, as well as inventor declarations and a Power of Attorney. 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.
- The filing of a continuation requires the preparation of yet another ADS. The RCE avoids this.
- For a continuation, the filer is forced to set and clear dockets to check for the USPTO recognizing the Power of Attorney. The RCE avoids this.
- For a continuation, the e-filing of the Power of Attorney may require construction of a new and different Form 82A to reflect the new application number. The RCE avoids this need.
- The practitioner may feel the need to record assignments in the continuation case. This requires the work of e-filing the assignments for recordation as well as setting and clearing dockets, and proofreading the Notice of Recordation. The RCE avoids this.
- For a continuation, the filer needs to docket to check for receipt of a filing receipt, and needs to proofread the filing receipt. If the USPTO has made errors, the filer will need to expend time and energy forcing the USPTO to correct the errors. The RCE avoids this.
- For the continuation, to avoid the malpractice risks of DOCX filings, the practitioner would have to pay the $430 penalty. The RCE saves the practitioner 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.
- If there is any difference in the amount of PTA (patent term adjustment) earned as between the RCE or the continuation, it will be a difference that makes the RCE preferable to 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.
I do not believe the comment –
Any IDS that had been filed in the parent case would need to be filed again in the continuation case- is wholly accurate.
See MPEP 609.02-
When filing a continuing application that claims benefit under 35 U.S.C. 120 to a parent application (other than an international application that designated the U.S.), it will not be necessary for the applicant to submit an information disclosure statement in the continuing application that lists the prior art cited by the examiner in the parent application unless the applicant desires the information to be printed on the patent issuing from the continuing application (for continued prosecution applications filed under 37 CFR 1.53(d), see subsection A.1. below). The examiner of the continuing application will consider information which has been considered by the Office in the parent application.
Thank you for commenting. Yes this is a judgment call. TYFNIL I think it would likely be a disaster if the references from the parent case were to fail to be listed on the front page of the issued patent. I think defense counsel would have a field day insinuating to the judge and jury that there is no proof the Examiner actually complied with MPEP 609.02. But yes, if one is lucky enough that some particular patent never gets litigated or license-priced, I can respect a judgment call to rely upon MPEP 609.02. I have updated the posting to benefit from your comment.
If you file a continuation, you don’t have to submit any substantive reply, I guess? I assume you can wait until the first office action on the merits. That might buy more time. At least, that’s what I understand as a European patent attorney, and heeding laches (but that could be less of a worry after the Google/Sonos judgment of August 2025, and provided no Supreme Court reversal).
And, with a continuation, you can revert to the claims as originally filed and revisit your strategy with better knowledge of the prior art.
1) Don’t forget refiling the POA and declarations (can likely be same ones from parent case but might need to replace docket #, if used on either form, plus possibly renaming the PDFs themselves.
2) An even bigger pain is filing the assignment and docketing for its return.
3) A new ADS! Which would probably need to be manually uploaded.
4) A new application means proofreading the filing receipt, and the possibility of errors.
I feel that any savings in PTO fees would be far less than the additional attorney costs associated with a new application, even when it’s a continuation. Similar to why you don’t think it’s cost-effective to file micro entity applications.
Thank you for commenting. Yes I will update the article to reflect your comments.
A parent application will likely receive some PTA based on delays that occur during its prosecution process, resulting in an extended expiration date. The continuation application does not receive any PTA, so its expiration date will be earlier than that of the parent.
Thank you for commenting. Yours is a good point about PTA. I have updated the article to include this point.
My main issue with a continuation is the added delay – depending on the technology group, it could sit untouched for 24 months or more. (If you’ve paid for Track One, you may not notice much delay, but if you’re paying for that, you’re probably not worried too much about the difference in fees anyhow.)