Ex Parte Appeals During Examination

April 21, 2021

If a patent application has been twice rejected at the US Patent and Trademark Office or a final office action has been issued, it may be time to file an appeal. By filing an appeal, a pending application is reviewed by a panel of at least three administrative patent judges, rather than the same examiner who already rejected the pending claims.

In order to begin the appeal process, a notice of appeal must be filed. This notice of appeal can be filed within three months of a final office action, or six months of the final office action with payment of the appropriate extension fees. Once a notice of appeal is filed, a two-month deadline to file an appeal brief is triggered, but this deadline may be extended an additional five months. In the appeal brief, arguments must be articulated to overcome the examiner’s rejection of the pending claims. Note, any arguments not raised in the appeal brief may be waived later on, so it is important to raise all potential arguments at the outset (i.e., in the appeal brief).

After the appeal brief is filed, the examiner must respond to all arguments in an examiner’s answer and, in doing so, consider whether to maintain or modify each rejection. The Board will then consider the arguments raised in the examiner’s answer and appeal brief. Ultimately, the Board will either (1) agree with the applicant and instruct the examiner to allow the application, or (2) reject the appeal and side with the examiner to maintain the rejection(s).

Note, the applicant has the option of filing a reply brief to substantively respond to the examiner’s answer. Additionally, the applicant can also request an oral hearing during which oral argument will be heard by the Board. These two options at the disposal of the applicant provide additional avenues to put arguments before the Board, which do not exist during the traditional course of prosecution.

Infographic - Datasource Item: 2020 PTAB Appeal Process

Click to enlarge image