APPEALING THE EXAMINER REJECTION


Introduction

I recently published a blog regarding the frustrating but common rejection of a patent application based upon the examiner asserting that the invention is obvious.  See  Overcoming an Obviousness Rejection.  Depending upon the individual circumstances, it may be worthwhile for appealing the examiner rejection.  

Recall obviousness under 35 U.S.C. section 103 can be a subjective exercise or judgment of the examiner.  This is a major cause of the frustration experienced in contesting such a rejection.

A rejection based upon obviousness arises from the examiner concluding that the existence of one or more prior art references (typically issued patents or published patent applications) would cause the claimed invention to be obvious to a person skilled in the art.  Again, see my blog of March 2, 2019 entitled Overcoming an Obviousness Rejection.  You may also find useful to review of my blogs entitled Section 103 Obviousness Rejections  and Section 103 Obviousness Rejections II

Discussion

It is not uncommon to have substantive disputes with the examiner regarding whether prior are references make an invention obvious. If the claimed invention is deemed obvious by the examiner, it can not be patented. One strategy is to appeal the examiner’s rejection to the Patent Trial and Appeals Board (PTAB).  Obviousness rejections are the basis of most appeals filed with the PTAB. 

It is possible to file an appeal to the PTAB after receipt of a final rejection from the examiner.  (Of course, it is possible to continue examination after receiving a final rejection by filing a Request for Continued Prosecution along with the appropriate fee.  (For a small entity, the fee is $650 for the first request and $800 for all subsequent requests.) 

The USPTO fee for filing an appeal is $400 for a small entity.  There will be legal expenses in preparing an appellate brief.  

I have reviewed a 2018 article by Ryan Pool of the firm Millen, White, Zelano & Branigan P.C.  He has analyzed the success rate of PTAB appeals. Particularly the success rate for appealing an obviousness rejection.  The success rate is close to but less than 50%.  That can be discouraging.  However each appeal is specific to the facts of the dispute.  Again recall the justification the examiner is required to furnish in making an obviousness rejection. 

Also the USPTO appeal requirements provide for a 3 person review by USPTO personnel of the appeal prior to it being forwarded to the PTAB.  The panel is comprised of 3 examiners (separate from the examiner that issued the rejection). A significant number of the examiner rejections subject of the appeal are withdrawn by this review panel without the appeal actually being submitted to the PTAB administrative law judges.  The percentage of appealed rejections actually withdrawn prior to submission to the PTAB is not published.  One estimate is between 25 to 50%.  Again, however, this cannot be verified.  

Filing of an appeal is an additional expense of patent prosecution.  However, it may be more cost effective to file an appeal after the first final rejection than to file a CPR and pursue several responses to office actions.  

In evaluating whether to appeal, or continue prosecution before the examiner, or simply abandoning the case, it will be important to understand the examiner’s attitude, as well as the examiner’s understanding of the invention.  Like everyone, an examiner can become predisposed to the issue of patentability without truly understanding the invention and the applicability (or non-applicability) of the cited prior art.  

All of this requires analysis of the invention, the prior art, and the examiner’s disposition & understanding.  This is another reason for conducting interviews with the examiner to obtain a first-hand understanding of the examiner vis-à-vis the application subject of the invention.  Again, remember, grounds for appeal will be limited to the contents of the specification.  Hence the need for broadly describing the invention within the specification.  

Conclusion

The time and costs of patent prosecution for a small entity are significant.  Filing an appeal of an examiner’s rejection can feel like taking the application to an even higher and more expensive level.  However, filing an appeal after the first final rejection can be cost effective and time efficient in comparison with multiple instances of back and forth with the patent examiner (and paying for Requests for Continued Examination) plus attorney’s time for multiple interviews and responses to each examiner’s rejection.  Plus it may be the only way to get past an obstinate or non-comprehending examiner on the issue of prior art and wrongfully asserted obviousness.  

Copyright David McEwing, 2019AA