From the category archives:

Appeals

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Can I appeal a decision of the Board of Patent Appeals and Interferences?

by Clifford D. Hyra on January 14, 2009

So you had a disagreement with a patent Examiner and appealed your case to the Board of Patent Appeals and Interferences (BPAI), but the Board ruled against you.  What are your options?  Well, you could file a continuation application or RCE and keep trying at the Patent Office, but if you really think the Board [...]

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What is the Examiner’s Motivation? (Part 3)

by Clifford D. Hyra on January 13, 2009

In part 1, I introduced the performance system faced by Examiners and in part 2 I explained how this performance system affects the prosecution process.  In part 3, I discuss the ways that the incentives faced by Examiners can be used to an applicant’s advantage.
Timing
One way that knowledge of the performance system can be used [...]

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Should I file an RCE or a Notice of Appeal?

by Clifford D. Hyra on August 15, 2008

Even if you already know in general what after-final patent prosecution involves and when it is appropriate to appeal , sometimes the decision of whether to appeal is not clear-cut.  For instance, you may have a fundamental disagreement with the Examiner and believe that you have a strong chance on appeal, but the Examiner may [...]

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The Patent Prosecution Process – After a Final Rejection

by Clifford D. Hyra on August 8, 2008

When the Examiner rejects the claims of your patent application a second time on the same grounds, the Examiner wil make his or her Office Action final, which means that you do not have the automatic right to receive further consideration and a new Office Action.  You can present additional arguments, but if they are [...]

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When should I Appeal?

by Clifford D. Hyra on August 8, 2008

Unfortunately, turnover at the Patent Office is very high and the quality of Examiners can vary widely. What happens when an Examiner is not applying the correct law or misunderstands a key aspect of your invention? The first step is to try to work it out with the Examiner.  Many Examiners are friendly and intelligent.  [...]

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