When a claim in a patent application has been rejected twice, the application can be appealed. There are a couple steps in this process.
First, it is common to file a notice of appeal, and, on the same day, file a Pre-Appeal Brief Request for Review, which is a miniature five-page appeal brief. This serves to give the examiner a chance to review the case with two neutral people. A patent appeal has the best chance at success when the examiner has clearly missed something in prosecution and needs to have someone other than the inventor point it out.
Two examples of instances in the past where I have succeeded:
- The examiner stated a person of ordinary skill in the art would be able to combine certain references, but the author of one of the references explained he was doing something completely different. Rather than discount the author, the examiner ignored the declaration entirely. If this went to the Patent Trial and Appeal Board (PTAB), the application would be remanded to the examiner to consider the declaration and make a decision on the case.
- The claim called for a metal thread and the examiner couldn’t find one, so she combined a reference that had a metal box with a reference having a cloth thread. That combination was inoperable. I pointed this out and eventually the claim was allowed.
If the request for review fails, an appeal brief is the next step.
If the Pre-Appeal Brief Request for Review isn’t successful, an appeal brief needs to be filed within 60 days from the notice of appeal being filed. After that is filed, it is eventually assigned to the examiner, who technically has two months to respond. Unfortunately, the two-month date is a best case scenario and as a matter of experience, examiners do not meet it very often.
Once the examiner writes an answer then the applicant has two months to provide a response. The response is optional and the case goes to the PTAB either way. The PTAB then assigns three administrative patent judges to hear the case. In some very select cases, clients have opted to have me argue a case in-person in Alexandria, Virginia.
Appealing PTAB’s decision
Finally, the PTAB makes a decision. However, this decision is far from the last word in the matter, and you can always adjust your claims and try again.
Alternatively, if the PTAB makes a decision that is lacking in a legal basis, the matter can be appealed to the Court of Appeals for the Federal Circuit. In some cases, the Federal Circuit hears the case, receives oral argument, and renders an opinion. In other cases, it simply affirms the USPTO without another word on the matter under a Rule 36 summary affirmance.