The appeal alternative to the RCE loop: A better forum for having your arguments heard at the USPTO

The patent appeal process is often thought of only as a last resort, requiring unreasonable costs and drawing out the pendency of a patent application.  What many don’t realize is that more than half of all appeals result in the rejections being withdrawn within 6 months and cost less than a third of the anticipated appeal fees.

As costs rise and IP budgets tighten, it is more important than ever to prosecute patent applications efficiently. At the same time, businesses and inventors still expect maximum claim coverage for their inventions. With this in mind, the USPTO’s appeals process should be utilized early in prosecution to maximize the return on your IP budget by minimizing claim amendments and shortening prosecution.

Yet many patent applicants remain reluctant. Why? Historically, appeals cost more than other options and could take several years to receive a decision from the Patent Trial and Appeal Board (PTAB) and its predecessor.  But appeals are being decided by the PTAB much more quickly, and there is even the possibility of accelerating the decision to just a few months for a small fee. On top of that, most appeals succeed before even reaching the PTAB. Perhaps appeals are also perceived as an overly confrontational or aggressive way to resolve a dispute with the examiner. Some applicants prefer more diplomatic routes, such as filing an RCE, because they think they are closer to reaching an agreement with the examiner than they actually are. Whatever the reason, appeals remain heavily underutilized—and many of the justifications for avoiding them are outdated or were never valid.  Meanwhile, the cost of filing a request for continued examination (RCE) and extending prosecution continues to increase.

The RCE loop

When an application is finally rejected (i.e., prosecution is “closed”), it is almost impossible to make headway with the examiner.  If there is no agreement on patentability at this point, applicants can either file an RCE or a notice of appeal. Applicants tend to default to RCEs, absorbing the ever-increasing fees as a routine prosecution cost, and entering new amendments that limit the scope of the claims.

Unfortunately, continued examination is often unproductive. The application is returned to the same examiner, who already has an opinion regarding patentability and generally will try to maintain their previous rejections. Even when minor amendments are made, the usual result is that new references are added to the rejection, rather than patentability being reconsidered as a whole.

This dynamic creates the “RCE loop”: unproductive examination leading to multiple successive RCEs and repeated narrowing of the claim scope. The USPTO actively discourages this practice, as evidenced by their disproportionate increase of RCE fees. In 2025 alone, the fee for a first RCE increased 10% to $1500 and the fee for a second RCE and beyond increased by 43% to a staggering $2860. Defaulting to RCEs can make the total cost of prosecution prohibitively expensive. By contrast, an appeal is often a much more productive process.

Cutting off the RCE loop with an appeal

Some of the benefits of an appeal include:

• Guaranteed review by at least two other examiners in addition to the original examiner
• No need to further narrow claims
• Higher rates of allowance or withdrawal of rejection
• Deferred fees
• Multiple chances to reach an agreement with the examiner or reopen prosecution prior to forwarding to the PTAB (and incurring the full cost of appeal)

Flexible proceeding with several “off-ramps”

Many applicants do not realize that the appeal process consists of several stages, each offering an “off-ramp” to resolve the dispute with the examiner before reaching the PTAB. This spreads out costs over time and often leads to a better resolution than continued examination would produce. The most expensive and time-consuming stage—forwarding and docketing the appeal with the PTAB—is not reached in most cases. The idea that filing an appeal kicks off an “all or nothing” process is far from the truth.

Review by three examiners

When an appeal is filed, the Applicant initially may request a pre-appeal conference. This allows the Applicant to present brief arguments (in 5 pages or less) to a panel of three examiners, who decide whether to allow the case, re-open prosecution or proceed to appeal. This can be a great forum for re-opening prosecution when the examiner has made a clear error in a rejection.

Multiple opportunities to make arguments

As mentioned above, filing a notice of appeal entitles the applicant to request a pre-appeal brief conference and additionally submit an appeal brief which is reviewed by a panel of examiners. The applicant is further entitled to respond to any new points the examiner raises in the reply brief. In other words, filing a notice of appeal gets the applicant up to three chances to submit arguments and have them considered by additional reviewers in one proceeding.

We have observed that the panel review and Examiner’s Answer are often the first times the examiner has to seriously consider the applicant’s position and justify the rejection. This is likely because the examiner’s reasoning comes under more scrutiny at these stages. As a result, these back-and-forth stages of the appeal can prompt new explanations from the examiner or even reconsideration of the rejection and allowance. Even if the examiner does not reverse their position, the Examiner’s Answer can be probative of the strengths and weaknesses of the examiner’s arguments and can inform the applicant of what to do at the next stage (i.e., whether to pay the forwarding fee or file an RCE).

Prosecution can be reopened with an RCE at any stage

If the pre-appeal ends with a decision to proceed to appeal (or pre-appeal is not requested), the applicant can either file a full appeal brief or reopen prosecution with an RCE.  An additional panel of examiners convenes in an appeal conference when the appeal brief is filed, and again decides how to proceed. This effectively subjects the rejection to a greater level of scrutiny where a panel of examiners must agree to maintain the rejection rather than a single examiner unilaterally affirming their own rejection. If the panel decides to proceed with the appeal, the Applicant can review the Examiner’s Answer and decide to either file a reply brief and proceed to the PTAB, or take an off-ramp by filing an RCE to reopen prosecution.

With this in mind, the appeal process is much more of a back-and-forth than people realize. Given these off-ramps and opportunities for reconsideration, most appeals do not even reach the PTAB. According to PTAB statistics, only 43% of appeals are actually docketed to the PTAB. [1]

The actual time and expense of an appeal

The appeal process is also now quicker and cheaper than most applicants realize. The average pendency of an appeal is 6.6 months[2] and participation in the pilot fast track program can reduce pendency even further, to under a 4-month target time.[3] However, as 57% of appeals are withdrawn before being forwarded to the PTAB, these waits often do not materialize. Also, while the USPTO has been sharply increasing the fees for filing a RCE, the appeal fees have been holding fairly steady.  And because these fees are paid in stages, applicants may end up paying comparatively very little. Only $905 is due upon filing the notice of appeal and optional pre-appeal brief request; there is no additional fee for filing an appeal brief. So, for a single fee of $905, the applicant has two opportunities to have the rejection reversed by a panel of three examiners.  This, by comparison, is cheaper than a first RCE. Even if the appeal goes to the PTAB, the total fees come to $3440, which is cheaper than the total fees of $4360 for filing two successive RCEs.

The appeal process is one of the most underused tools in an applicant’s arsenal. It offers independent review, preserves claim scope, costs less than serial RCEs, and resolves disputes faster than most applicants expect. After all, it is the USPTO’s intended forum for resolving disagreements with the examiner. With built-in off-ramps that frequently lead to favorable outcomes well before reaching the PTAB, the risk of pursuing an appeal is low while the potential upside is significant. As RCE fees continue to climb and examination quality remains inconsistent, incorporating appeals into your prosecution strategy will secure allowances more efficiently—and ultimately deliver better value to the business.

If you have questions or need assistance navigating the appeal process, McDonald Hopkins' Intellectual Property attorneys can help.

_{[1] Data obtained from USPTO’s 2023 Ex Parte Appeals Roadshow presentation, available at https://www.uspto.gov/sites/default/files/documents/ex_parte_appeal_roadshow.pdf.}

_{[2] As of May 2026}

_{[3] Pendency is calculated from the time an appeal is docketed to when the PTAB issues a decision.}