Why the USPTO is Discouraging Continuing Applications—And Why There Are So Many in the First Place

The USPTO, in its latest proposed fee changes by Director Vidal, is actively discouraging applicants from filing continuing applications—whether Requests for Continued Examination (RCEs), continuations, or divisional applications. But why have continuing applications become so common in U.S. patent prosecution? The answer is simple: the USPTO's own policies and procedures have historically encouraged this behavior.

A System Working Against Itself

The current USPTO is grappling with the consequences of policies that its earlier iterations created. We live in the land of compact prosecution (per the CFR) and a basic filing fee covering 3 independent and 20 total claims (going back to 1982). The CFR requires that examination be thorough and complete (see 37 CFR 1.104(a)(1)), meaning that a first rejection must consider patentability of all claims and statutory requirements.

But that's really hard, and examiners are humans and judged on counts. The first way examiners increase counts (there are multiple ways): Restrictions.

How Restrictions Drive Continuing Applications

Restriction requirements limit the initial search and examination burden by the examiner—at the effect of limited prosecution and additional continuing applications, and there is little to no procedural recourse to applicants to subjective and even borderline-unreasonable restriction practice.

The law originally required that claims were subject to restriction if they were "independent and distinct.” Although that is still the language of the statute, somewhere along the way USPTO practice morphed into independent or distinct—and distinct grew legs.

Do the claims fork (can include A or B)? Species restriction. Applicant must select one, and if you need to amend to include the unselected, that's another case. Disagree? You have to petition the director, and prosecution continues either way.

Do the figures include different embodiments? Restriction. They even make you select a figure and then provide your own division of claims, and if they disagree with your selection, they do whatever they want and cancel your claims. Good luck fighting that. Prosecution continues with an examiner who's upset that you're petitioning to management about their subjective determinations.

Can the method be performed by another system/apparatus? Restriction. Can the examiner imagine a scenario where two of the elements could be considered in different classes? Restriction.

Restriction. Restriction. Restriction. Applicant's recourse? Effectively none.

Incentives to File Continuations: A Product of the System

Why have applicants not challenged restriction practice more forcefully? Because the impact was minimal due to prior fee-parity between continuations and original filings and there is some benefit to the continued prosecution in allowing business to mature before expending the cost to fight for all corners of eligible protection. Applicants could always just file another continuation or divisional and try again to grab those claims without substantial fee burden.

Then a subtle shift occurred: subsequent RCE fees began increasing (which seems only a behavioral tax on applicants to incentivize abandonment due to the familiarity of the case/history between the Office and the existing subject matter). Then the cost of new filings increased with subsequent RCE fees, because if not, applicants would file a CON instead of an RCE when faced with final action (where time to issuance (and maintenance fee incursion) was not of the essence)--there's essentially parity between a second RCE and a CON as it sits.

Escalating Fees and the Broader Shift

The current proposals increase RCE costs even further for third and subsequent RCEs--which by definition are those claims fought the hardest, either broad protection or simply with the most difficult examiners (especially burdensome on some technology classes, as the Office has no examination parity across art units). They're even more expensive than a continuation/divisional, until the new proposed 5 and 8 year post-initial filing taxes go into effect.

Of course the Office can find a justification to increase fees on continuation and divisional applications (after 5 years and 8 years post initial filing)--but that's only surface justification. The proposed fee increases are not a shift to more accurately reflect internal processes--they're an attempt to change applicant behavior, to reduce the number of issued patents--especially continuing family members, which are more likely to be litigated than original filings.

A Shift Toward Fewer Patents: Favoring Large Entities

This shift in policy is consistent with broader changes in the USPTO’s approach to patenting. The Office’s increasing fees are tied to a larger effort to discourage the proliferation of patents, particularly those held by smaller inventors or entities more likely to challenge large corporate players in litigation.

For the largest companies, fewer issued patents—especially fewer continuing applications—mean fewer domestic litigation risks. The shift away from strong patent protection and toward reducing patent families reflects the growing importance of ensuring that U.S. companies can outcompete globally without being hindered by domestic patent disputes.

At its core, this strategy supports large corporations and aligns with broader national interests that prioritize global competition. By narrowing the scope of patent protections and limiting the number of continuing applications, the U.S. can foster a more innovation-friendly environment for its largest companies, while making it harder for smaller innovators to protect and enforce their patents.

Conclusion: A Changing Patent Landscape

The USPTO’s ongoing push to discourage continuing applications is not just about easing examiner workloads. It is part of a larger effort to shift the balance of patent protection, with the goal of reducing the overall number of issued patents—particularly those likely to be enforced in litigation.

This strategy is working against the reality that earlier USPTO policies encouraged: one where applicants could file multiple continuations or divisionals without significant financial pressure. Now, with rising fees for RCEs, continuations, and divisionals, the USPTO is actively trying to change the landscape, making it harder to pursue broad protection over time.

For applicants and patent practitioners, these changes mean adapting to a system where quick allowances on core claims may be prioritized, while broader protections are pursued with more caution—and at a higher cost. As the USPTO’s policies continue to evolve, patent strategy must evolve with it, taking into account the growing financial pressures and the long-term implications for protecting innovation.