Source: USPTO
APPEALS vs RCE – Options after final rejection
- Comparing RCEs with PTAB appeals:
- (a) Decision makers;
- (b) Scope of evidence and arguments;
- (c) Timing; and
- (d) Costs.
TIMING: OVERVIEW
- RCEs:
- Examiner responds to RCE in about 2.5 months.
- Appeals to PTAB:
- PTAB issues a decision on appeal about 12-13 months after the appeal forwarding fee is paid.
COSTS
- RCEs:
- 1strequest: $1,360/$680/$340;
- 2ndand subsequent requests: $2,000/$1,000/$500;
- Costs to prepare response to final rejection.
- Appeals:
- Notice of appeal fee: $840/$420/$210;
- Appeal forwarding fee: $2,360/$1,180/$590;
- Fast-Track Appeals petition fee: $420 ($0 if COVID-19 Related);
- Costs to prepare appeal brief and reply brief;
- Request for oral hearing fee: $1,360/$680/$340.
*shown as undiscounted/small entity/micro entity, as applicable.
Summary
- The facts of the case are the best guide to selecting how to proceed after final rejection.
- There are faster options for appeals.
- Typically ~12 months after forwarding fee paid.
- Can be 2 months or less with Fast-Track.
- Appeals have multiple “off-ramps.”
- After each of the Pre-Appeal Brief Conference and Appeal Conference, many applications allowed or reopened.