In 2013, the USPTO changed the fee structure for ex parte appeals. This change continues to impact whether an Applicant proceeds with an appeal or instead reopens prosecution mid-appeal by filing a Request for Continued Examination (RCE). And since we often are asked about filing an RCE during an appeal, this topic still merits our consideration.
Before 2013, the USPTO charged two notable fees during the appeal process. The first fee was charged for initiating an appeal by filing a Notice of Appeal in response to an Office Action. The second fee was charged for filing an Appeal Brief. That is, both fees were paid before an appeal conference considered the Appeal Brief. (Appeal conferences are currently discussed in MPEP 1207.01.)
Relevantly, the appeal conference decides whether to withdraw the rejection or issue an Examiner’s Answer. If the Examiner’s Answer issues, then Applicant is permitted, but not required, to file a Reply Brief. 37 CFR 41.41(a).
Therefore, even if Applicant took no further action after filing the Appeal Brief, the Applicant eventually would receive a decision from a judicial panel. So, Applicants had little incentive to discontinue an appeal by filing an RCE. Perhaps the best reason to file an RCE mid-appeal was to save time in response to a compelling Examiner’s Answer.
After 2013, the USPTO eliminated the fee for filing the Appeal Brief and started charging a fee for forwarding the appeal to the judicial board. This forwarding fee should be paid at the time the Reply Brief is filed. If no Reply Brief is filed, the fee is still due at the time the Reply Brief should have been filed (i.e., two months from the date of the Examiner’s Answer).
If the forwarding fee is not paid, then the appeal is dismissed. Typically, this dismissal means the application is abandoned. MPEP 1215.04 III.
Therefore, to avoid abandonment, Applicants must either pay the forwarding fee or re-open prosecution by filing an RCE.
The current governmental fee for forwarding the appeal is $2360. In contrast, the governmental fee for a first RCE is $1360, and the governmental fee for a second or subsequent RCE is $2000. Assuming the service charge for a Reply Brief and an Amendment are the same, it can be less expensive (and more expeditious) to simply file an Amendment and an RCE than to file a Reply Brief and forward the appeal.
Of course, expense is not always the primary concern. Applicants should consider the value of the appealed claims, particularly relative to the value of potentially amended claims. The likelihood of success also should be considered.
Still, in many cases we have seen in our Nodal YouTube series, the Applicants would have been well-advised to file an Amendment and RCE after receiving the Examiner’s Answer. Under the pre-2013 USPTO fee structure, this strategy might not make as much sense. However, under the current fee structure, Applicants should at least consider this option.
If Modal PLLC can assist you in an ex parte appeal strategy, please do not hesitate to contact us.