Patent Appeal Practice
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Recorded February 2017. Chris Maiorana interviewed by Steve Sleeper.
What is a patent appeal?
Chris: The
Patent Appeal Process
is when the U.S. Patent Office first examines a patent application, they issue an office action that typically has at least some sort of rejection to the
claims; although it could be just an allowance with all the claims. The prosecution process,
discussed here,
is called streamline prosecution, which means you get one
chance to amend your claims. After you amend the claims, the U.S. Patent Office is either going to allow them or continue to reject. If they send a
rejection, it’s typically marked 'final.' You have the chance to appeal at that point. You don't have to, but you get the chance.
What is a Patent Appeal Brief?
Chris: A Patent Appeal Brief is typically an appeal brief that's filed as part of your Patent Appeal process. It's a long document that itemizes all of what the applicant believes are the flaws in the Patent Examiner's decisions. It’s what a Patent Attorney in Michigan, or anywhere, monitors.
What is the content of a brief?
Chris: The content of the Patent Appeal Brief is divided into multiple sections. You outline pending claims and have to note the rejections
outstanding on the record. Then you make arguments of why you think your claims are patentable. Ultimately, most of what we do as Patent
Attorneys is make arguments why your claims are patentable. When you go to an appeal, you're making arguments with the examiner on where
you don’t agree. You're taking it to the next level; to the patent board .
Any other options?
Chris: You don't have to appeal. You could amend your claims or you can abandon your claims. Either amend again, or you appeal. If you think you already amended your claims enough, or you don't want to amend your claims because you think they're already patentable over the art of record and the Patent Examiner doesn't agree; then you can go on to an appeal.
When do you decide to appeal?
Chris: That's an interesting question because you have to take one step back on that decision. We look at it after final rejection from the U.S. Patent Office and decide whether we're going to appeal. First, we need to amend the claims to get past the rejection for the art that's outstanding. If you don't need to amend the claims, then you're going to argue only after final rejection. But that is making a commitment to go to an appeal. If the Patent Examiner doesn't agree with you, you don't have the choice to go back to an RCE at that point because you haven't made a claim change.
The U.S. Patent Office changed the system examiners use. The Patent Examiner gets what they call a count for sending out the initial search, and another count for finalizing the case. In the old days, the examiner didn't get his final count until after the appeal was over. He had more leverage. Now they get the count for filing their examiner's answer. It makes it easier for them to make their quota. When I say 'count,' that's not the same thing as a
count in a patent interference. A count in this sense is
the Patent Examiner's internal quota system. They have to get so many counts per pay period, per quarter and per year. In
a patent interference, the count is the conflicting
subject matter between the two; the issued patent and the competing application.
I've heard Patent Appeals are difficult to win. Why do you win most of them?
Chris: I think it's because we carefully select which cases we're going to appeal. We're looking for a case in which the examiner made an unreasonable argument, or didn't adapt his argument to the new facts in the case. In some cases, we'll do a second round or even a third round of amending; especially if there's new art that's come up. If the examiner hasn't brought up anything new, and we think we have a strong case for an appeal, then we'll appeal it.
We don't appeal that many Patent cases. We do maybe one or two per quarter, so we're not giving in to the Examiner's arguments on all cases. We appeal enough so we have that as a positioning tool. It’s like a bluff in poker. You don't appeal every time, but you appeal enough so that they know it’s a possibility. The examiners don't like patent appeals because it’s someone looking over their shoulder. If they lose, it's potentially a mark on their credibility. It's a negative because someone is
saying, "Hey, you were wrong on this and the Patent Lawyers Ann Arbor were right."
How long does it take to get a decision?
Chris: What's interesting is now the board is claiming they have backlog. A few years ago, they hired a lot of new attorneys at the board level. Then, the Patent Examiners and the attorneys working with them, tended to push more cases to the board. The pendulum has shifted and this is happens a lot now. The board is busy so they raised the maintenance fees so they can hire more people at the board to cut down on the perceived backlog.
Anyhow, I think the oldest one is three years out. Most of them come back in about two years. It does seem like a long time; but the good part is you get a patent term adjustment if you win a successful appeal. If it's an important patent, those extra years in the PTA get added to the end of the patent, so it potentially could be even more valuable.
Book an appointment to discuss your Patent issues with one of our Attorneys.
- Chris Maiorana
- December 2018 (Updated July 2019)