When deciding whether to appeal an examiner’s adverse decision, an applicant will need to weigh the cost and investment of time against the likelihood of success. Usually, an applicant can get an interview with the patent examiner to determine whether the examiner is acting reasonably in his or her decision.
There are cases in which an examiner’s rejection of an application is not at all supported by the facts, and those tend to be better cases for appeal than rejections based on ambiguous legal or factual issues. For example, an appeal might be appropriate if an examiner finds that a claim’s elements are suggested by cited prior art, and that cited prior art does not suggest claim elements.
The applicant can initiate an appeal by filing a notice of appeal and filing fee with the Patent Trial and Appeal Board (PTAB), with which the America Invents Act replaced what was previously the Board of Patent Appeals and Interferences. The PTAB reviews adverse decisions, holds derivation proceedings, inter partes, and post-grant reviews, and reviews appeals of reexaminations.
Within two months of filing the notice of appeal, you will need to file your appeal brief. The appeal brief will be sent to the patent examiner who issued the final rejection for response. At that point, the patent examiner can reopen the prosecution process in order to enter a new ground of rejection, the examiner can withdraw its rejection and permit the claims, or the examiner can keep the rejections and file an answer to your appeal.
If the examiner chooses the third option, the examiner will have to file an answer within two months of the date the appeal brief was filed. Two months after that, you will have to respond with a reply brief. At this point, you can request an oral hearing before the PTAB. This can be a telephonic or video hearing. The PTAB will then decide the outcome of your appeal.
Judicial Review of the Patent Trial and Appeal Board Decision
If the PTAB rules against your application, you have two options for judicial review of the Board’s decision. You can either appeal the decision directly to the United States Court of Appeals for the Federal Circuit, or you can file a civil action against the Director of the PTO in the United States District Court for the District of Columbia.
If you choose the first option, the Federal Circuit will have to review the PTAB decision on the same administrative record. You will not have an opportunity to provide new evidence in this proceeding. The Federal Circuit can only set aside factual findings by the PTAB if they are not supported by substantial evidence.
If you choose the second option, you can commence a civil action under 35 U.S.C. § 145 or 146 by filing a complaint in the U.S. District Court for the Eastern District of Virginia. The Director, the U.S. Attorney for the District of Columbia, and the Attorney General will have to be served, and a copy of the complaint will need to be filed with the PTAB within five days of filing in district court.