Patent It Yourself - PDF Archive

392 | Patent it YOURSELF
4. Appeal and Pre-Appeal Request for Review
If you don’t see any further way to improve the claims,
and if you believe the examiner’s position is wrong, you
can appeal a final or secondary rejection (not objection)
to the BAPI (Board of Appeals and Patent Interferences), a
tribunal of senior examiners (administrative law judges) in
the PTO. If the issues are clear, prior to the appeal you can
request an appeal conference of senior examiners in your
examining division to review the case, hopefully to avoid
filing a full brief and sending the case up to the Board.
To appeal, you must file a Notice of Appeal stating that you
appeal to the BAPI from the examiner’s final action, together
with an appeal fee. (See Appendix 4, Fee Schedule.) If you
also want an appeal conference (strongly recommended)
the Notice of Appeal should be accompanied with a “Pre-
Appeal Brief Request for Review” (PTO/SB/33—no extra fee),
plus a “succinct, concise, and focused set of arguments” (no
more than five pages at 1.5-line spacing) in support of your
position. A copy of a PTO/SB/33 is provided as Form 13-5
in Appendix 7. When providing the five pages of argument,
you can condense your last amendment. You do not have to
include the claims. The Notice of Appeal, Pre-Appeal Request
for Review, and Focused Set of Arguments may be mailed
with a check, but the PTO prefers that you eFile them with
a charge authorization or fax them with a CCPF. The PTO
prefers that you use this process only where there are clear
errors in fact or law and not where the issues are in gray
areas, such as interpretations of the prior art or claim scope.
A panel of three examiners, including a supervisor and the
examiner of record, will review your arguments and issue a
decision to either (1) continue the appeal because they agree
with the examiner of record, (2) reopen prosecution and
propose changes that will place the application in condition
for allowance or advise that a further communication from
the examiner will follow, (3) allow the application, or (4)
dismiss your request because it fails to comply with the
submission requirements. If the panel’s decision is alternative
1 or alternative 4, you must file the usual brief and fee within
one month from the decision or within two months from the
date you filed the Notice of Appeal, whichever is longer.
If you requested an appeal conference and the decision
was negative, or if you didn’t request an appeal conference,
file an appeal brief in triplicate if by mail, or a single copy
if by fax or electronically, describing your invention and
claims in issue and arguing the patentability of your
claims. This brief is due within two months after you file
your Notice of Appeal (or as stated above if you requested
an appeal conference) and must be in a specific format
specified by the Rules. Enclose a Brief fee.
If you desire it, request an oral hearing and enclose a
further hearing fee (see Appendix 4, Fee Schedule). If you
want an oral hearing, you’ll have to travel to the PTO in
Alexandria, Virginia, or ask for a telephone hearing. As
always, include a Certificate of Mailing and postcard or
Certificate of Faxing with all correspondence that is mailed
or faxed.
For information on how to comply with the appeal procedure
and write the brief, see Part 41 of the PTO Rules of
Practice (37 CFR 41).
After you file an appeal brief, the examiner must file
a responsive brief (termed an “Examiner’s Answer”) to
maintain the rejection. To do this, the examiner (and
usually two other examiners) must take another good, hard
look at your case. Often this review will result in changing
the examiner’s mind. More commonly, the examiner will
maintain the rejection and file an Examiner’s Answer. You
may then file a reply brief to respond to the Examiner’s
Answer.
If you do have a hearing, you will be allowed 20 minutes
for oral argument. Sometimes the examiner attends; if so,
15 minutes will be allowed for the examiner’s presentation.
If the Board disagrees with the examiner, it will issue
a written decision, generally sending the case back with
instructions to allow the case. If it agrees with the examiner,
its decision will state why it believes your invention to be
unpatentable. The Board upholds the examiner in about
65% of the appeals.
If the Board upholds the examiner and you still believe
your invention is patentable, you can take a further appeal
within 60 days of the date of the BAPI’s decision to the
Court of Appeals for the Federal Circuit (CAFC). The
CAFC is located in Washington, but sometimes sits in
local areas. If the CAFC upholds the PTO, you can even
request the United States Supreme Court to hear your case,
although the Supreme Court rarely hears patent appeals.
(See Chapter 15, Section M, for more on the CAFC.)
Under the new GATT law, as indicated, patents expire 20
years from the filing date of the patent application, but the
PTO will extended this term up to five years if delay occurs
due to an appeal to the BAPI, the CAFC, or because of an
interference. (35 USC 154.)
Appeal briefs aren’t easy to write, so I suggest you
consult professional help if you want to appeal.
If the examiner has issued a ruling on a matter other
than the patentability of your claims—for example, has
refused to enter an amendment or has required the case
to be restricted to one of several inventions—you have
another option. Although you can’t appeal from this type
of decision you can petition the Commissioner of Patents
and Trademarks to overrule the examiner. (See Section 6,
“Petitions to the Commissioner,” below.)