How to Appeal a Patent Rejection

Sometimes, an appeal is your only reasonable option in a patent application that has been repeatedly rejected. The right time for an appeal may be when you’ve exhausted all other easier options and have tried to compromise as much as possible with a particular patent examiner. Ex parte patent appeals are decided by the Patent Trial and Appeal Board (PTAB or Board) of the USPTO. Here’s how the patent appeal process works.

Notice of Appeal

The process begins with a simple Notice of Appeal, which may be filed within three months of the Final Office Action without need for extensions or, at the latest, within six months of the final rejection with payment of appropriate USPTO extension fees. The filing of the Notice of Appeal triggers a two-month deadline thereafter to file the Appeal Brief. You may want to hold off on filing the Notice of Appeal if there are additional arguments or pieces of evidence you wish to introduce into the record. As of the time of this post, the USPTO fee for a Notice of Appeal is $800 for a large entity and $400 for a small entity. Our firm charges a flat rate of $250 for filing a Notice of Appeal.

Appeal Brief

This is where the bulk of the appeal costs lie. The cost for drafting and filing the Appeal Brief can be significant and will largely be determined by the number and complexity of issues on appeal. The two key sections of the Appeal Brief comprise the Summary of claimed subject matter and the Argument section. Our attorney’s fees for drafting an Appeal Brief may range from $3,000 to over $10,000.

Examiner Answer & Forwarding Fee

Once the appeal brief is filed, the Examiner meets with the supervisor and one other examiner to discuss the rejection, your appeal brief, and whether they want to send the case to the Board.  At this stage, the Examiner can withdraw the rejection or file an Examiner’s Answer.

If an Examiner’s Answer is filed, you must pay a USPTO forwarding fee ($2,000 large entity; $1,000 small entity) within two months of the Examiner’s Answer to send the case to the Board. Our firm charges a flat rate of $750 for both reviewing the Examiner’s Answer and paying the forwarding fee.

Optional Reply Brief

The applicant has the option to file a Reply Brief in response to arguments raised in the Examiner’s Answer. The Reply Brief should not consist of a rehash of the arguments already made in the Appeal Brief. For example, if the examiner’s position shifted in the Examiner’s Answer, this should be discussed in the Reply Brief. The Reply Brief is also due two months from the date of the Examiner’s Answer. Our attorney’s fee for a reply brief may range from $2,000 to $8,000.

Optional Oral Hearing

An oral hearing may be requested by the applicant if desired. Attorney’s fees may vary widely depending upon the amount of preparation and actual time in attending the oral hearing.

Board Decision

The PTAB will issue a decision typically around 30 months from the start of the appeal. There are several possible outcomes including a remand, new grounds of rejection by the Board, reversal of the Examiner’s rejection or affirmance of the rejection. If the appeal is determined in the Examiner’s favor, the applicant has 63 days from the mailing date of the decision before the application is abandoned. During this period, the applicant may file a request for continued examination or a continuing application and claim priority to the original application.

Appeal Costs

The cost of a patent appeal may range from thousands to tens of thousands. Costs may increase significantly if the appellant pursues the Oral Hearing. As of the date of this post, USPTO fees for the Notice of Appeal and forwarding fee total $1,400 for a small entity and $2,800 for a large entity.

Board’s Jurisdiction

Jurisdiction over a patent appeal proceeding passes to the Board upon the filing of a reply brief or the deadline for filing a reply brief, whichever is earlier [see 37 CFR 41.35]. The Board’s jurisdiction ends when:

  • the Board enters a remand order;
  • the Board enters a final decision;
  • an express abandonment is recognized;
  • an RCE is filed;
  • Applicant fails to take any required action; or
  • Applicant reopens prosecution.
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Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.
Vic Lin

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