How to handle Unfavorable Patent Appeal Decision

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It may feel like the end of the road when the Patent Trial and Appeal Board (PTAB) rules on an ex parte patent appeal and upholds an examiner’s rejections, but there are still some choices available. By bringing a civil case in federal district court or making an appeal to the Court of Appeals for the Federal Circuit, you can pursue legal action. Such expensive undertakings will likely be avoided by budget-conscious patent applicants.  

In this essay, the non-litigation choices of filing a Request for Continued Examination (RCE), a continuing application, or a hearing request will receive the most attention. Detailed information regarding the procedure following a decision by Board is available on the USPTO website.

Table of Contents

How to Challenge an Ultimately Rejected Patent?   

When your patent application has been repeatedly denied, an ex parte appeal may be your only viable choice. The time for an appeal may be suitable when simpler alternatives have been tried and no progress has been made toward a resolution with the examiner. The Patent Trial and Appeal Board (PTAB or Board) of the USPTO renders decisions on ex parte patent appeals.  

Following a negative or unfavourable patent appeal decision, you have a few options before moving on to non-litigious courses of action:  

  • Request for Rehearing by the Board within two months of the date of the patent appeal judgment; 
  • RCE 63 days after the date of the Board’s decision; 
  • Within 63 days of the date of the Board decision, submit a continuing application.; 
  • within 63 days of the date of the Board decision, file a civil action in federal court in the Eastern District of Virginia; or 
  • Within 63 days after the Board decision date, file an appeal with the Federal Circuit Court of Appeals.. 

Board of Patent Appeals and Interferences (BPAI)  

It is a request for a hearing before a panel of normally three Board members (until the Board deems an extended panel essential) to ascertain whether the patent examiner’s rejection was justified. After the claims have been denied twice within the time frame specified in § 1.134, the applicant must first submit a Notice of Appeal.   

For the Notice of Appeal and the Appeal Brief, extensions of time under § 1.136 are allowed. Currently, a large business must pay $540 for the Notice of Appeal and $540 for the Appeal Brief. Both fees must still be paid even if the Notice of Appeal and Appeal Brief are filed jointly. 

A two-month window opens up once the Notice of Appeal is filed for the Appeal Brief. Therefore, depending on when you file the Notice of Appeal, you essentially have control over the timeframe for your appeal brief. As a result, you might wish to wait to submit the Notice of Appeal until you are confident in the amount of time you have left to write the Appeal Brief. 

The BPAI examines the appeal brief once it is submitted to see whether it complies with MPEP § 1205.03’s 41.37. The application is sent to the examiner for review if the Appeal Brief is determined to be in compliance. The application is sent to the Board for a final review of the content after all subsequent briefs and answers have been submitted, or if none have been filed within the allotted time frame, the case is remanded for correction of informality or given an appeal number and is then assigned to a panel of Board members. 

Rehearing 

In rare instances where the Board has erroneously misconstrued or failed to consider important issues of fact, a Request for Rehearing would be appropriate. A mistaken view of important questions of fact might, for instance, result from misreading a prior art reference that expressly contradicts the Board’s interpretations. Rehearing requests may also be justified by comments in prior art references that are ignored but contradict or exclude a Board finding. Keep in mind that the facts must be crucial. Even if irrelevant facts were misunderstood, a request for a rehearing might not be appropriate. 

A request for rehearing must be submitted within two months of the judgment date, unlike the other post-appeal alternatives. After the Board makes a decision about the rehearing request, the deadlines for the remaining alternatives will be reset to 63 days.  

Unless the Board has specified a new cause of rejection or you feel the appeal judgement contains an undesignated new ground of rejection, fresh arguments or evidence are often not allowed in a Request for Rehearing. You can also make an argument about how a recent case should influence the Board’s appeal determination by citing a recent relevant judgement made by the Board or a Federal Court. 

Request for Continued Examination (RCE) 

After patent prosecution (or examination) on a patent application has concluded, a patent applicant may request continued examination (also known as RCE) to continue the examination of their patent application. An Applicant can reopens prosecution to provide claim modifications, arguments, statements, or other fresh evidence, a Request for Continued Examination can make sense. New information is not the same as new material. For instance, laboratory or experimental data to prove a specific claim’s nonobviousness can be new proof, but not new substance.The form for the RCE is available here  

Continuation-in-Part (CIP) Application  

In order to pursue a new subject matter that is not supported by the specification, a continuation-in-part (CIP) application should be filed. Filing a CIP could make a lot of sense if the applicant has fresh information that could aid the claims in overcoming the current rejections that were upheld in the appeal judgment. By allowing the parties to start again with fresh claims, a CIP may also revitalize the relationship between the applicant and the examiner. Neither party must be constrained by the previous assertions and supporting evidence.  

The examiner might uncover additional prior art that was created between the initial priority date and the CIP filing date, which is one possible disadvantage of filing a CIP. In other words, your CIP claims stating the new matter may now be mentioned against prior art that was created after your parent priority date but before your CIP filing date. 

Conclusion

Even though the patent statute allows appeal before the claims are ultimately rejected, an applicant should take advantage of the chance to engage in conversation with the examiner in order to create arguments and a more thorough grasp of the examiner’s justification. Because the protracted appeals procedure can be avoided, a successful prosecution before the Examiner will probably result in an early issuing of the patent.  

The Applicant should continuously assess and reinforce his case during the ex parte prosecution in terms of technical arguments based on both concepts and semantics in addition to legal grounds. There are many ways to proceed with the prosecution before the Examiner if it is found that the claims are not in the best possible shape for appeal. 

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