The Patent Office rejects most patent applications at least once. Depending on the situation, you can respond to a rejection by clarifying the language of your patent claims, or just by arguing that the examiner is wrong. Ideally, this will result in an allowance of your claims. But what if it doesn’t?
If you reach an impasse with your examiner, you still have options. One of those options is a formal appeal. When you file an appeal, you’ll have the opportunity to argue your case to a three-member panel known as the Patent Trial and Appeal Board (PTAB).
When can I appeal?
A U.S. patent application is eligible for appeal after any of the claims have been rejected at least twice. In practice, this usually means that an appeal is possible after the examiner issues a final Office action. (See our post on the US examination process). That’s yet another reason why a so-called “final” Office action isn’t actually the end of the road.
What happens during an appeal?
To appeal a rejection to the PTAB, you must file a form called a Notice of Appeal along with an Appeal Brief, which is a legal document laying out the reasons the rejection should be withdrawn. Your law firm will prepare and file the Brief with the Patent Office.
Initially, the Appeal Brief is reviewed by your examiner and at least one other examiner. At this point, one of three things will happen:
- Your examiner is persuaded by your arguments and, seeing no other reason for rejecting the application, issues an allowance (this ends the appeal process);
- Your examiner is persuaded but decides to reject the application for some other reason (this ends the appeal process and restarts examination); or
- Your examiner is unpersuaded and moves the appeal process forward by issuing an Examiner’s Answer in response to the Appeal Brief
If the Appeal continues with an Examiner’s Answer, you then have the opportunity to respond with a Reply Brief. The Reply Brief may or may not be optional, depending on the situation.
Finally, unless you choose to stop it now, the Appeal moves forward to the PTAB. The PTAB has the power to affirm or reverse the rejection under appeal. You have the option to request an oral hearing before the PTAB, but this is uncommon.
An Alternative Path: The Pre-Appeal Brief Request
Another possibility is to file a Pre-Appeal Brief Request for Review (PABR) at the beginning of the process, along with the Notice of Appeal and prior to filing the Appeal Brief. The PABR process is aimed at the quick resolution of a straightforward question. Like an Appeal Brief, it’s reviewed by your examiner and at least one other examiner. Unlike an Appeal Brief, it’s subject to relatively few formal and substantive requirements, and is strictly limited to five pages in length.
So, a PABR can be a good shortcut if the rejections involve relatively simple issues that seem likely to be cleared up easily once the examiner consults with a colleague. In that kind of situation, the PABR can save you the time and expense of a standard Appeal.
In response to the PABR, your examiner may allow the application, restart the examination process, or inform you that the issue is too complex and should be pursued with a standard Appeal Brief.
If going back and forth with your examiner stops being productive, it might be time to consider an appeal. Your patent firm will be happy to talk about whether an appeal makes sense in your situation. As always, if you have any questions, feel free to contact us.
Blog Post © 2021 Kolitch Romano LLP
Photo © 2020 Dave Bourgeau
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DISCLAIMER: This article is intended to give the reader an overview of the topic, and does not constitute legal advice as to any particular fact situation. Facts matter, and every situation is different. In addition, laws and their interpretations change over time and the contents of this article may not reflect these changes. You are strongly advised to consult competent legal counsel regarding your particular situation.