Should I file an RCE?

You receive a final office action that allows some claims, giving you the option to file an RCE to keep arguing the non-allowed claims. In the end, you may get a patent with broader claims. However, there is some amount of risk in not capturing the allowed claims. The reason for this is simple – an examiner can change his or her mind with respect to the allowed claims, and then you are stuck with no allowed claims. It happens, as any experienced patent practitioner can attest. Not only can an amendment be refused entry, but in the case of an amendment and RCE, the Examiner is entitled to renew his search and therefore, if he happens to find new art that reads on a claim previously designated as allowable, then he is entitled to withdraw the allowance. Not to mention that Examiners can sometimes be vindictive or difficult to deal with for reasons which defy logic or reason. The bottom line is that Examiners are not always predictable. Also, there is turn-over at the Patent Office, and with the length of time it takes a case to be examined, you can get an entirely different Examiner examining the RCE.

Another option is to withdraw the non-allowed claims, secure a notice of allowance on the allowed claims and continue to argue the remaining claims in a continuation application. There is a practical side to this as well. The Examiner can have more rejections than the applicant client has  money or time. Sometimes something is better than nothing. It is important to evaluate how the potential patent benefits your business. This changes over time and patents need to align with overall business strategy for the company.

At the very least, any patent must cover your commercial embodiment to be valuable. Patents do have value to businesses other than their enforcement potential (such as marketplace perception of state-of-the-art and innovation or providing assets for investors or lenders. Another school of thought is that coverage of the patentee’s product is not important; rather, it is critical that a patent covers a potential competitor’s design-around.  A patent that is cheap to design around amounts to a financial burden of maintenance fees rather than really being a business asset.

Patent strategy depends on your business goals, needs and budget. Working with an experienced practitioner can help you evaluate your options and decide on a course of action that best aligns with your business plan.