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Appealing a Rejected Patent Application May Have Less Appeal

Appealing the rejection of a patent application is no longer the easy option. After a patent examiner issues a “final” office action rejecting an application, the applicant can file a Request for Continued Examination to continue before the same patent examiner, or alternatively appeal the rejection to the U.S. Patent Trial and Appeal Board (PTAB). In 2001, applicants dissatisfied with their examiner would file an appeal. It was the easiest thing to do. The Notice of Appeal fee was only $310 as was the filing fee for an appeal brief (small entity). Even with legal fees, the appeal effort cost a few thousand dollars. The appeal decision took an average of nine months and the odds of success were good. In fiscal year 2001, PTAB statistics show that at the beginning of 2001, 6,322 ex parte appeals were pending, 81% were disposed of, 36.8% objections were reversed and 21.3% were remanded to the examiner for further processing. The same options exist today in 2021, but the return on investment is gone. The Notice of Appeal fee is now $840, an increase of 270%, the appeal brief forwarding fee is $2,360, an increase of 761% increase, and with legal fees the effort may cost tens of thousands of dollars. In 2021, 7,155 appeals are pending and a decision takes an average of 13 months depending on technology. Of the appeals disposed of through September 2021, only 32.7% were reversed and only 10% were remanded for further processing. Because of the lower rate of reversals and remands, it should come as no surprise that appeals have been dwindling in popularity during the past 20 years. Appeals are now a cost-benefit decision and absolutely require the inventor’s conviction that the patent examiner is wrong and evidence of same.

 

Royal C. Craig
410-576-4109 • rcraig@gfrlaw.com