It can make you want to tear your hair out if your patent gets rejected, but that won’t help you achieve your dreams. What can help is appealing the USPTO’s decision, and this article is about how you can do that.
Reasons For Appeals
Before you embark on the appeals process, you will want to know if your appeal is worth making. Your first step should be reading the rejection form. The examiner, according to the USPTO, has to explain his or her decision if it has something to do with obviousness or novelty. Another step is asking for an interview with the patent examiner to get an explanation.
Some common reasons for rejection include obviousness, lack of novelty, and a lack of patentability.
Your idea may be considered obvious by the examiner if a prior reference or a bunch of prior references have all the elements that go into your idea. Basically, everyone in the industry could come to your conclusion by reading the relevant material.
Novelty is about prior art: can your examiner point to a thing already in the public domain that is practically a kissing cousin of your thing? Then you will be rejected.
Now, sometimes these rulings are a bit subjective and there is room for debate. There are legalistic and factual issues that can be interpreted either way. Other times, the examiner has misread absolutely everything and is being unreasonable. You can appeal either situation, but you have a much better chance of getting your patent on appeal if you are in the second situation.
Of course, they also might reject your claim because the application was done incorrectly. That is why you get an expert to help you file it in the first place.
The Appeals Process
The 2011 America Invents Act changed the appeals process a lot. For one thing, you are now allowed to take your reexaminations to the federal appeals court.
Before you do that, however, there are many steps you need to take, and each one is a chance to get your patent accepted.
First, you file a notice to appeal and pay the appropriate fee to the Patent Trial and Appeal Board (PTAB). This is the ‘new’ appeals board that the 2011 act put in place of the Board of Patent Appeals and Interferences.
You then have two months to put together an appeal brief. This brief will, according to the 37 CFR 41.27, include a notice of the people involved (the office will assume that it is the inventor if you don’t state it,) a list of all the related pending patents and cases involving your patent that you know of, and a summary of your claims. You then tender your arguments as to why the office was wrong to reject your patent and explain anything missing from your appeal.
The appeal will go before the examiner who originally rejected your patent. He or she will then either reject your patent on new grounds, accept your patent, or keep rejecting it on the old grounds. If they find new grounds to reject your patent, you start all over again.
If they stay their course, the examiner has to file an answer to your appeal.
You can then file a reply brief and ask for an oral hearing with the PTAB, which can be by video or telephone. You can take it to the Federal court if the PTAB rules against you.
Call In The Experts
Patent trials and appeals require more legal knowledge than it does technical knowledge, and you will be presenting your information before legally trained judges. Fortunately, Larson & Larson has years of experience and much training in just this area. We want to give your idea a fighting chance, so contact us if you want our help.