An appeal at the Patent Office is an administrative process providing for substantive review of some action taken by the patent examiner in a patent application. Where a patent examiner has twice rejected a patent application, such as for novelty or obviousness issues, an appeal can be filed to have the case reviewed by the Patent Trial and Appeal Board. PTAB appeals should not be lightly entered, and the below discussion only very quickly touches on the major phases of an appeal. Please consult an experienced patent attorney if you have particular questions about the process or about a pending patent application.
Notice of Appeal
A notice of appeal must first be filed to institute an appeal. This involves filing the Notice of Appeal paperwork and paying the appeal fee, which at the time of this writing was $400.00 for small entities. The Notice of Appeal filing tolls the period for responding to the last office action. Instead, it initiates a 2 month period for filing the Appeal Brief.
The Appeal Brief sets forth the Appellant’s argument. It must present arguments responsive to every ground of rejection stated by the examiner in the Office action from which the appeal has been taken. If any ground of rejection is not addressed, argument or challenge to that ground is waived. An appeal brief should be filed within 2 months of the Notice of Appeal. However, 1-month extensions can be obtained through payment of a surcharge.
After the Appeal Brief is filed, the Examiner may respond with a formal Answer. The Answer is simply the Examiner’s response supporting his or her previous rejections and addressing the Appellant’s argument. The Answer is deemed to include all the rejections presented in the Office Action from which the Appellant has appealed, and the Answer may also present new grounds for rejection. If the Answer presents a new ground of rejection, the Appellant is given two months to either reopen prosecution or maintain the appeal and present a Reply Brief that addresses the new grounds. The Examiner, together with a Supervisory Patent Examiner and another experienced examiner, will then conduct an appeal conference to discuss the state of the appeal.
Oral argument can be requested. It should be requested only in those circumstances in which the Appellant considers such a hearing necessary or desirable for a proper presentation of the appeal. An appeal decided on the briefs without an oral hearing will receive the same consideration by the Board as appeals decided after an oral hearing.
After quite some time (several years, often) the Board will consider the appeal, the briefs submitted, the facts, and the law, and establish a decision. The decision will generally either affirm, reverse, partially affirm, or remand the decision of the Examiner. After decision, jurisdiction of the application returns to the Examiner for further review consistent with the decision of the Board. The Appellant may also request a rehearing within 2 months of the decision to raise new arguments in light of new law or new rejections.