Patent Appeals - When and How to do Them. Episode 64
- Adam Diament
- Mar 20
- 5 min read
Where You Are in the Patent Process
If you’re thinking about appealing and have followed this podcast in order, here’s where you likely are in the process:
You filed a patent application. The patent examiner rejected it. You responded by arguing for patentability, amending your claims, or both. Then, you received a final rejection, also called a final office action. At this point, you have several options, which I covered in Episode 61.
One option is to file a Request for Continued Examination (RCE), which allows the same examiner to review your application again for an additional fee. This is generally a good first option, but if you feel that the examiner won’t change their mind, or if you already filed an RCE and still received a rejection, you might consider an appeal.
In the last episode, I discussed another option: requesting a pre-appeal brief conference, where a short document (a pre-appeal brief) is reviewed by a panel of three examiners, usually including your examiner and their supervisor. Because of the panel composition, statistically, it’s unlikely to lead to an allowance.
If neither the examiner nor the panel is convinced to allow your patent, the next logical step is an appeal.
Filing a Notice of Appeal
The first step in an appeal is filing a Notice of Appeal. This is done using form PTO AIA 31. The form is simple—it requires checking boxes indicating whether you are a large, small, or micro-entity and paying the corresponding fee. The current fees are:
$200 for a micro-entity
$400 for a small entity
$800 for a large entity
This must be filed within three months of your final rejection, or up to six months if you pay extension fees.
The Notice of Appeal simply informs the USPTO that you intend to file an appeal brief, which contains the legal arguments for why your invention deserves a patent.
Filing the Appeal Brief
Once you file the Notice of Appeal, you have two months to file your Appeal Brief. You can extend this deadline by up to five additional months if you pay extension fees.
The Appeal Brief is the main document arguing why your invention should be allowed and how the examiner was incorrect in their rejection. The requirements for an appeal brief are more complex than those for a standard response. If you want all the details, search for 37 CFR 41.37.
The appeal brief must contain several sections:
Real Party in Interest – This identifies who actually owns the application. For example, if you are an inventor working for Apple, but the application is still in your name, the USPTO wants to know that Apple is the real party in interest.
Related Appeals, Interferences, and Trials – If there are related patents undergoing appeal or litigation, the Patent Trial and Appeal Board (PTAB) wants to be informed.
Summary of the Claimed Subject Matter – This section briefly describes your invention, referring to where it appears in your application and drawings. If you are appealing only certain claims, specify which ones and summarize them.
Arguments Section – This is the most critical section. Here, you must clearly explain where the examiner was wrong, citing statutes, regulations, and case law. Each rejection must have its own heading and detailed response.
Since the appeal board members are not necessarily experts in your field, it is important to explain everything as clearly and concisely as possible.
What Happens After Filing the Appeal Brief?
Once you file your appeal brief, you might assume the appeal board immediately reviews it—but that’s not how it works.
The first step is that your examiner reviews your appeal brief. A few things can happen at this stage:
Best Case Scenario: The Examiner Allows the Application – If the examiner reads your appeal brief and realizes their rejection was incorrect, they may allow the application without it ever reaching the appeal board.
Prosecution Is Reopened – The examiner reopens prosecution, meaning you are forced to continue responding to new rejections instead of proceeding with the appeal. Unfortunately, this can happen even when you don’t want it to. If the examiner decides to introduce new grounds for rejection, they can do so, stopping your appeal process. If this happens, you must either respond to the new rejection or file a new appeal brief addressing the examiner’s new arguments.
Examiner’s Answer – If the examiner stands by their rejection, they file an Examiner’s Answer, explaining why they believe the rejection should be upheld. This typically happens within two months of your appeal brief submission.
Responding to the Examiner’s Answer
Once you receive the Examiner’s Answer, you have a decision to make:
If you are convinced by the examiner’s reasoning, you can drop the appeal.
If you disagree, you can file a Reply Brief within two months of the Examiner’s Answer. A reply brief is optional, but if there is anything in the Examiner’s Answer that you feel needs to be addressed, you should submit one.
Regardless of whether you file a reply brief, you must file an appeal forwarding fee (PTO AIA 34) within two months of the Examiner’s Answer. The fees (2019) are:
$560 for a micro-entity
$1,120 for a small entity
$2,240 for a large entity
You may also request an oral hearing, though it is not required. If you choose to have one, you must file a Request for Oral Hearing within the two-month window. The fees for this are $235, $650, or $1,300, depending on entity size.
Waiting for a Decision from the PTAB
Once the appeal is forwarded, you wait. The current average wait time for a decision is about 15 months. You will receive a decision either with an oral hearing (if requested) or based on the written record.
Possible Outcomes of the Appeal
When the PTAB issues a decision, several things can happen:
Reversal of the Examiner’s Rejection – The best outcome. The board instructs the examiner to allow your application.
Affirmation of the Examiner’s Rejection – The worst outcome. The board agrees with the examiner, but you still have options.
Remand to the Examiner – The board may send the case back to the examiner for additional review.
Partial Reversal – Some claims may be allowed while others remain rejected.
If the PTAB affirms the rejection, you have several options:
File a Request for Continued Examination (RCE) with new amendments or arguments.
File a Continuation Application to pursue similar claims.
Appeal to the Federal Circuit Court of Appeals.
Final Thoughts
Patent appeals are complex, and I do not recommend handling them alone. Understanding the process is beneficial, but filing an appeal is something best left to a patent attorney.
I’m Adam Diament, and until next time—keep on inventing!
