Patent prosecution can be a challenging process. Sometimes, an appeal may be your only reasonable choice when you received another rejection from the Examiner. A patent appeal is a formal process by which an applicant challenges the USPTO examiner's decision to reject a patent application. Appeals are reviewed by the Patent Trial and Appeal Board (PTAB) at the USPTO and the process always begins with a Notice of Appeal.
Notice of Appeal
To initiate the appeal, you must file a Notice of Appeal within the timeframe specified after the final rejection, which is three months of the Final Office Action without extension or within six months of the final rejection with payment of USPTO extension fees.
You will need to pay a USPTO fee when you file the Notice of Appeal. As of the time of this post, the USPTO fee for filing a Notice of Appeal is $840 for large entity and $336 for small entity. Sometimes, you may also consider submit a Pre-Appeal Conference Request along with the Notice of Appeal. After the filing of the Notice of Appeal, you will need to file the Appeal Brief within two months, which is also extendable for five months.
Therefore, you can decide when to start the appeal process by determine when to take the first step to file the Notice of Appeal. You can have up to six months after the final rejection to decide whether it is in your best interest to file an appeal. You can also use that extra time to prepare drafting the Appeal Brief until you are comfortable to file the Notice of Appeal to trigger the process.
Appeal Brief
Once you file the Notice of Appeal, you will need to prepare the Appeal Brief and file it within the timeframe. This document is the most important part of the appeal process - it lays out your arguments against the examiner's rejection and provides you the opportunity to persuade the PTAB.
Examiner's Answer
Once the Appeal Brief is filed, it will be reviewed by a panel of examiners, typically consisting of three examiners, including the primary examiner who issued the final rejection and two other examiners, one of whom is a supervisory patent examiner (SPE).
If the panel agrees that the rejection should be maintained, the appeal brief is forwarded to the PTAB. If the panel finds issues with the examiner’s rejection, the application may be reopened for further examination or allowed. If the decision is made to forward to PTAB, the examiner will issue an Examiner's Answer addressing your arguments.
Forwarding Fees and Reply Brief
The Examiner's Answer will provide notice that the appeal forwarding fee must be paid within the requisite time period - usually within two months of the Examiner's Answer. The forwarding fees as of today is $2,360 for large entity and $944 for small entity.
You can choose to file a Reply Brief in response to the arguments presented in the Examiner's Answer. The deadline to do so is within two months of the Examiner's Answer. The Reply Brief is usually optional. However, if the Examiner raises new ground of rejection in the Examiner's Answer, you are required to submit the Reply Brief to address the examiner's new ground of rejection to maintain the appeal.
Oral Hearing
You may request an oral hearing before the PTAB. This is optional and should be used strategically, as it can be used to clarify complex points in front of PTAB to help make the decision on the appeal.
Board Decision
The PTAB generally issues a decision about 30 months after the appeal begins. If you need to expedite the appeal process, you may consider the Fast-Track Appeals Pilot Program. Possible outcomes include a remand for further examination, new grounds for rejection set by the Board, a reversal of the examiner’s rejection, or an affirmation of the rejection.
If the decision favors the examiner, the applicant has 63 days from the mailing date before the application is considered abandoned. Within this time, the applicant can file a request for continued examination (RCE) or a continuation application.
Why Should You Consider Filing an Appeal
Patent appeals can be costly and time-consuming, therefore it is essential to consider whether it's in your best interest to do so. Below are a few reasons to consider:
Repeated Rejections Despite Strong Arguments: if your application has received multiple rejections and you believe that the examiner has misinterpreted or overlooked key aspects of your argument or your feel like you are hitting a wall with the examiner, it may be time for filing an appeal.
Differences in Legal Interpretation: sometimes the examiner may apply an incorrect legal standards for rejections based on patent eligibility under 101, novelty under 102, obviousness under 103, or written description requirement or enablement under 112. When this happens, you may want to file an appeal for a review of these legal standards.
Safeguarding Key Claims: if the claims under rejection by the examiner are critical for your business goals, an appeal is able to help protect them from being unreasonably narrowed or dismissed.
The statistics from the USPTO show that 72% of appeals result in outcomes other than an affirmation of the examiner’s rejection, including cases that are allowed, reopened, or receive another action. For appeals that reach the PTAB, 30% end with a full reversal of the examiner’s rejections, meaning the Board finds the invention patentable as originally claimed.
This high rate of favorable outcomes demonstrates that appealing can be a strategic option when you believe an examiner’s rejection is incorrect or overly restrictive. Additionally, appeals often lead to remands or new grounds for rejection, providing applicants an opportunity to further refine their applications or address specific issues raised by the PTAB.
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