Patent Bar: RCE vs. CIP vs. Divisional vs. CPA Forum

[James.K.Polk]

Am I allowed to just ask patent bar questions here? 0L, please don't run me out of town.

Having a little trouble wrapping my head around the difference between these concepts, and in particular which come with fees and why you would use, say, an RCE over an appeal? Heck, even an RCE vs. CPA seems like a semi-arbitrary difference.

Can anyone give me just a one-sentence blurb on each, or help me understand where I would use any of these.

[trmckenz]

I don't know the posting rules, but here's some info for you.

RCE vs Appeal
You would file an RCE and fee after receiving a final office action. Filing an RCE reenters your application into prosecution with the same examiner. After filing an RCE, you will receive a non-final office action from the same examiner, and the prosecution process continues. The RCE fee is less costly than an appeal fee, and is much quicker. The appeal is often reserved for when you hit a road block with an examiner that you don't see eye to eye with, and so the application gets kicked to the PTAB for review. Appeals are expensive in both procedural fees and professional fees (e.g., it takes a lot of time for a patent attorney to draft an appeal brief), so they may be used to get an allowance on more 'important' inventions as opposed to every invention.

CPA vs a CIP
When a CPA ('continuation') is filed, you preserve all earlier priority/filing dates of the parent application. It is literally the same application filed, only you get another shot with the claims. Maybe there is a bunch of patentable subject matter in the parent application, so you wanted to refile and reclaim the invention. A CIP ('continuation in part') means that you are introducing new subject matter. This new subject matter will not have the same priority/filing date as the rest of the subject matter that was included in the parent application(s). The new subject matter could be literally adding one new claim or word to the specification, or it could be completely different from the parent.

RCE vs CPA
You would file an RCE instead of the CPA because if you receive a final office action from the USPTO, chances are you have already begun prosecuting the application. You don't want to lose all of your work and rapport with the examiner (which can happen if you file a continuation). The costs are also less for an RCE (minimal difference, but still). From a practice perspective, you don't want to have a ton of abandoned applications if you can help it.

Good luck - lemme know if you have any other questions.

[NY_Sea]

Am I allowed to just ask patent bar questions here? 0L, please don't run me out of town.

Having a little trouble wrapping my head around the difference between these concepts, and in particular which come with fees and why you would use, say, an RCE over an appeal? Heck, even an RCE vs. CPA seems like a semi-arbitrary difference.

Can anyone give me just a one-sentence blurb on each, or help me understand where I would use any of these.

This is a great summary from trmckenz... If you wanted a one sentence blurb on each, it kind of centers around the result you want to achieve.

A RCE is basically paying to get another bite at the apple... The examiner gave you a Final Rejection, but you have another amendment in mind that you think could get the claims allowed. You pay for a RCE and start the process over again.

Appeals are usually only used if the examiner is just flat out wrong (at least where I work)... Appeals are expensive and are only used in situations where the examiner either a) doesn't understand the technology and thus, the amendments or b) is just being a stickler.

Continuations are pretty much done when you have allowable claims (again, at least where I work) and have another embodiment in the spec that you want to go after... The usual filing/search fees of a new application are paid in a continuation of any type (Regular CON or CIP).

[James.K.Polk]

Yep, this is awesome. Thanks guys!