Global Patent Prosecution - June 2020: Considerations When Appealing a Patent Application at the USPTO

Sterne, Kessler, Goldstein & Fox P.L.L.C.

This article discusses aspects of ex parte appeals of patent applications before the United States Patent and Trademark Office (USPTO). A patent applicant, whose claims have been twice rejected, may appeal an examiner’s decision to the Patent Trial and Appeal Board (PTAB). Four points of consideration related to the USPTO appeal process are discussed below.

First, patent applicants may consider the tradeoffs in pursuing the appeal process. In circumstances where an examiner is firmly entrenched in its positions, the appeal process provides patent applicants an opportunity to address the examiner’s positions before a panel of PTAB judges. The panel of PTAB judges closely review the record—including briefing submitted by patent applicants—to determine the reasonableness of the examiner’s arguments. This determination can be useful in not only the instant application but also in continuation applications that may be pursued by patent applicants, especially if the same examiner examines the continuation applications. But, the time and costs associated with the appeal process should also be considered when deciding to pursue the appeal process. In deciding whether to file an appeal, patent applicants may consider researching the examiner’s statistics on appeal, such as the examiner’s track record on affirmance by the PTAB.

Second, as an alternative to or in addition to the appeal process, patent applicants may consider requesting a pre-appeal conference. To request a pre-appeal conference, patent applicants must file a pre-appeal brief with a notice of appeal request. The pre-appeal brief is limited to five pages of arguments and cannot include claim amendments. The pre-appeal conference panel includes the examiner and two other conferees, who review the pre-appeal brief arguments and decide whether to allow the application, reopen prosecution, or proceed with an appeal to the PTAB. Because a pre-appeal brief is filed prior to filing an appeal brief, patent applicants can avoid the appeal process if the pre-appeal conference panel finds the examiner’s rejections to be legally and/or factually flawed. On the other hand, if the pre-appeal conference panel agrees with the examiner, patent applicants have the option to file a request for continued examination (RCE), which is discussed briefly below. Compared to the appeal process, the pre-appeal process can save patent applicants time and costs.

Third, patent applicants may consider to forego oral hearing during the appeal process. Patent applicants are provided an oral hearing as a matter of right upon submission of a request for oral hearing. For arguments that may be nuanced or challenging to express in the appeal brief, patent applicants may find the oral hearing beneficial to express such arguments verbally to the panel of PTAB judges. However, patents applicants may find these benefits to be outweighed by the time and costs associated with oral hearings. In addition, because the PTAB does not provide any type of preliminary opinion to patent applicants prior to oral hearing, preparation for oral hearing and gauging the likelihood of success may be challenging.

Fourth, patent applicants may consider planning their next steps if the PTAB affirms the examiner. In such cases, patent applicants have four options: (1) file a request for rehearing, (2) appeal to an appellate court, (3) commence a U.S. district court civil action, or (4) file an RCE. Because requests for rehearing (option 1) historically has had a high denial rate, patent applicants may want to avoid this option. In addition, patent applicants may find not find requests for rehearing beneficial because the requests generally cannot address existing arguments or introduce new evidence. With respect to filing an RCE (option 4), patent applicants are provided an opportunity to file new substantive amendments and arguments.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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