© 2012-2013 by Stephen L. Keefe
Appeal to the Patent Trial and Appeal Board
Although many statistics exist regarding appeals from the Examiner to the former Board of Patent Appeals and Interferences (reflagged as the Patent Trial and Appeal Board on September 16, 2012), Applicants can generally expect to wait several years for an appeal decision from the Board, with that decision often affirming the Examiner. Acknowledging that somewhat bleak prospect, the Civil Engineering Patent Applicant should strive to advance prosecution as much as possible with the Examiner directly, through reasonable claim amendments, arguments, and RCEs, before resorting to the appeal process.
An Applicant may appeal to the Board after a second Office Action, whether or not the Examiner makes the second Office Action final. To appeal, the Applicant files a Notice of Appeal, which is typically a single page requesting appeal, and a fee of about $600 (fees are lower for small entities--see Patent Filing). The Applicant then has two months from the filing of the Notice of Appeal to file a full Appeal Brief for consideration by the Board, which includes an additional fee of about $600. The USPTO allows the Applicant to extend the due date for filing the Appeal Brief by up to 5 months, but requires the Applicant to pay fees that increase sharply with each month (e.g., extending one month costs only about $150, but extending for the full five months costs over $2500).
The USPTO also provides the Civil Engineering Patent Applicant with another chance to persuade the Examiner to withdraw rejections when filing the Notice of Appeal, in the guise of the Pre-Appeal Brief Conference Pilot Program. In this program, which began in 2005, Applicants may file brief arguments that will be considered in an internal USPTO conference between the Examiner and a Supervisory Patent Examiner. Based on the results of the conference, the USPTO will issue a Notice of Panel Decision that will either allow the application based on Applicant's arguments, send the application back to the Examiner to issue another Office Action, or forward the application on to appeal at the Board. Some commentators estimate that such panel decisions favor the Applicant in about one out of three instances.
Estimates indicate that Applicants can expect to wait three or four years for the Appeal to be heard by the Board, though this time period constantly fluctuates. The Board affords Applicants an opportunity to present oral argument to a panel of three patent appeal administrative judges in support of their brief, for a fee of over $1000. During the appeal, the Examiner may also file a brief to the Board, and the Applicant may file an additional brief replying to the Examiner. The panel of three Board judges then considers all of the written and oral submissions and makes a final decision as to the appealed claims. Some possible outcomes from this appeal process include the Board partly or completely affirming the Examiner's rejections, or the Board partly or completely reversing the Examiner's rejections. Congress makes an intricate array of options available to the Applicant, including appealing the decision of the Board itself to the U.S. District Court for the Eastern District of Virginia or the U.S. Court of Appeals for the Federal Circuit.
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