How to Appeal a Final Patent Rejection

Sometimes, an ex parte appeal is your only reasonable option when your patent application has been repeatedly rejected. When other easier options and attempts at compromise with the examiner have been exhausted, the timing might be appropriate for an appeal. 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.

What is a Notice of Appeal?

The process begins with a simple Notice of Appeal. The Notice of Appeal 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. So you basically control the deadline of your Appeal Brief depending on when you file the Notice of Appeal. Therefore, you may want to hold off on filing the Notice of Appeal until you feel comfortable with how much time you have left to draft the Appeal Brief.

Notice how the Notice of Appeal is not the same thing as the Appeal Brief discussed below. The filing date of the Notice of Appeal will dictate when the Appeal Brief is due.

As of the time of this post, the USPTO fee for a Notice of Appeal is $840 for a large entity and $420 for a small entity. Our firm charges a flat rate of $250 for filing a Notice of Appeal. The total cost for filing of a Notice of Appeal is $670 for a small entity and $1,090 for a large entity.

What is an Appeal Brief and when is it due?

Drafting and filing an Appeal Brief is typically the costliest task of a patent appeal. 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 $4,000 to over $10,000.

What is an Examiner’s Answer and 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, this trio of examiners can either withdraw the rejection, which would end the appeal process, or move forward with the appeal.

If a decision is made to move forward with the appeal, an Examiner’s Answer will be filed. You will then be required to pay a USPTO forwarding fee ($2,360 large entity; $1,180 small entity) within two months of the Examiner’s Answer to send the case to the Board. The total cost for paying the forwarding fee is $1,930 for a small entity and $3,110 for a large entity, which includes our flat rate of $750 for both reviewing the Examiner’s Answer and paying the forwarding fee.

Is a Reply Brief optional?

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.

Is an Oral Hearing optional?

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.

When will the PTAB issue a 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.

How much does a patent appeal cost?

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 $1,520 for a small entity and $3,040 for a large entity.

It is important to keep in mind that appeal costs come in two stages:

  1. Notice of Appeal + Appeal Brief: approximately $4,400 to $10,000
  2. *Forwarding Fee + Optional Reply Brief: approximately $1,900 to $4,500 (*appeal might not reach this second stage if the rejection is withdrawn and/or prosecution reopened)

When does the Board’s jurisdiction in a patent appeal begin and end?

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.

What are your options if the appeal decision is a denial?

Even after all the effort, certain results can be outside our control. If the result is unfavorable, you still have an option to continue prosecution by filing an RCE within 63 days of the appeal decision, and before the filing of a notice of appeal to the Federal Circuit or the commencement of a civil action.

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Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and founders with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com