Published 11/19/2018 by CIONCA Team Member
The Appeals Process
During the patent prosecution process, it is not uncommon for an applicant to receive a Non-Final Rejection for their claims. Once the claims have been twice rejected (oftentimes the second rejection being a Final Rejection), the applicant could appeal from this decision. The patent applicant (in the case of a patent application) or patent owner (in the case of a reexamination) can file an appeal.
If an applicant decides to move forward with the appeals process, the first step is to file a Notice of Appeal with the Patent Trial and Appeal Board (PTAB, or Board), with the accompanying fee. This must be done within the time period set by the last Office Action. Then, an appeal brief must be filed.
The Notice of Appeal is a simple form that can be filed through the USPTO’s Patent Application Information Retrieval (PAIR) system. Like other documents in the patent prosecution history, the status of the application and the receipt date of the Notice of Appeal can also later be viewed through PAIR.
As of this writing, an ongoing pilot program allows the filing of a Pre-Appeal Brief Request for Review at the time of filing the Notice of Appeal. The USPTO provides a form for this request, and a separate paper should be submitted containing a succinct and focused set of arguments, no longer than five pages. If proper, the examiner of record is provided with the opportunity to review the arguments with a panel of reviewers assigned by a supervisor. The appellant does not attend this review. Based upon the findings of the review, the Office will next send a decision to the appellant, which could be that the application remains under appeal because at least one issue for appeal still exists, prosecution on the merits is to be reopened, the application is allowed on the existing claims, or the case is dismissed due to the request failing to comply with submission requirements.
This panel review could also be terminated if, before the mailing of a decision, the applicant files any of the following: an appeal brief, a request for continued examination, an after final amendment, an affidavit or other evidence, or an express abandonment.
If the panel review is completed and a decision is mailed to the applicant, the time period for filing an appeal brief is reset to one month from the mailing of the decision or the balance of two months from the Notice of Appeal, whichever is greater. Further information about the Pre-Appeal Brief Review Request pilot program can be found in MPEP 1204.02.
With no other factors in play such as a Pre-Appeal Brief Request for Review, the applicant must file their appeal brief within two months of filing the Notice of Appeal (otherwise, the appeal is dismissed). The appeal brief should contain an identification of the real party in interest, a list of any related appeals, interferences, and trials, a summary of the claimed subject matter, the arguments of the appellant, and an appendix of claims. Further details regarding the contents of the appeal brief can be found in 37 CFR 41.37.
The examiner will then discuss the case with a supervisor and another examiner to determine whether the case should be sent to the PTAB. The examiner can withdraw their previous rejection or file an Examiner’s Answer, which means that the appellant must pay a forwarding fee to send the case to the PTAB. They can also file an optional Reply Brief as a response to arguments in the Examiner’s Answer. Another option the appellant has at this stage is to request an oral hearing. However, the MPEP states that this should only be requested in circumstances where the hearing is necessary for a proper presentation of the appeal (MPEP 1209).
Three judges are assigned to the case when it is received by the PTAB. During their proceedings over the case, the PTAB could require the appellant to brief any matter considered to be of assistance in reaching a decision. These are accompanied by a time period for reply, and failure by the appellant to reply could terminate the proceedings. Similarly, any of the following could terminate the PTAB’s jurisdiction over the patent appeal: the PTAB entering a remand order or a final decision, an express abandonment, the filing of a request for continued examination, the applicant failing to respond to a request or take a required action, or the applicant reopening prosecution.
It is then up to the PTAB to issue a decision, which could be a new ground of rejection, a reversal, or affirmance of the Examiner’s decision, or the Examiner’s decision is affirmed-in-part. After the PTAB issues their decision, the jurisdiction passes back to the examiner of record. At this stage, the applicant can still file a request for continued examination or a continuing examination claiming priority to the application which was under review. If there is a new ground of rejection, the appellant could also reopen prosecution before the examiner (by submission of an amendment and/or new evidence). Lastly, within two months of the decision issued by the PTAB, the appellant could still optionally request a rehearing before the PTAB.
The USPTO provides a helpful guide to the appeals process, which can be accessed here: https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/appeals
Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law. P.C.
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