What is an ex parte patent appeal?
An ex parte patent appeal is the process to seek review of a final rejection in a patent application by going above the examiner’s head to get the Patent Trial and Appeal Board. The goal is to obtain a favorable decision by the Board that overturns the Examiner’s rejections.
How long does an ex parte patent appeal take?
As of the date of this post, the USPTO states that it takes 15 months from the time the Board receives jurisdiction over the appeal to the issuance of a decision. However, it can take several months before the Board receives jurisdiction. In particular, an Examiner’s Answer must first be filed. In some cases, an Examiner’s Answer may never be filed if a decision is made to reopen prosecution.
Are there better options?
Before deciding to file an appeal, consider whether further claim amendments can be made to secure an allowance. An examiner interview may be helpful if your patent attorney has not yet spoken to the examiner.
You want to make sure that the current condition of the claims are in the best position possible for arguing the appeal.
Alternatively, you may want to think about filing a continuing application with possibly new matter that can then be claimed.
Does an appeal make sense?
The time and expense of pursuing an ex parte appeal should cause you to pause before starting this journey. Have you exhausted all meaningful claim amendments? Has your patent attorney spoken to the examiner? Would another examiner interview be productive?
If you intend to rely on any evidence such as data or inventor declarations, make sure such evidenced has already been introduced into the record.