The BPAI is only an administrative agency of the government, with cases decided by Administrative Patent Judges (APJs).  Once you have exhausted your administrative remedies, you have the right to pursue judicial review of the administrative decision. There are two different types of courts that have jurisdiction over such cases and which you have the option of appealing to.  One is Federal District Court and the other is the Court of Appeals for the Federal Circuit in Washington, D.C.

Federal District Court

District Courts are found in every state.  For example, Virginia has two District Courts, the Eastern District of Virginia and the Western District of Virginia.  If you appeal to a District Court, you are entitled to a trial de novo.  That means you get a whole new trial, from scratch, and are not bound by the record at the Patent Office.  The judge will not review the Patent Office’s decision for correctness, but will instead arrive at his or her own independent ruling.

This gives you the opportunity to present new evidence and arguments that were not presented before the Examiner or BPAI. Appealing to a District Court is therefore an attractive option if your application could benefit from the submission of additional evidence in your favor.

On the other hand, in a complex case with a significant amount of evidence, a trial de novo can be very expensive, often involving expert testimony.  If you are satisfied with the evidence on record before the Patent Office, you may prefer to appeal to the Court of Appeals for the Federal Circuit.

The Court of Appeals for the Federal Circuit

The Court of Appeals for the Federal Circuit is one level below the Supreme Court of the Unites States and has appellate jurisdiction over all patent cases (among other subject matter), hearing appeals from the Board of Patent Appeals and Interferences as well as all federal district courts.  Patent cases make up about 30% of the Court’s docket.

At the Federal Circuit, the Patent Office’s decision is reviewed for correctness.  Issues of fact are considered under a substantial evidence standard, meaning that the PTO’s holding on a factual matter will be upheld if it is supported by substantial evidence.  Legal issues are considered de novo, without any deference to the legal conclusions of the Patent Office.

Since the Federal Circuit is an appellate court and only reviews the decision of the PTO, no new evidence or arguments can be submitted.  If you are satisfied with the record that was before the Patent Office and believe the Board made a mistake of law, the Federal Circuit may by the best place to appeal.  The Federal Circuit, being the appellate court for all patent matters, is extremely well versed in patent law, much more so than the average district court.  A Federal Circuit appeal can be resolved within a year, depending on the Court’s docket.

Cases taken initially to a District Court can also be appealed to the Federal Circuit after the District Court has rendered its decision, in which case the Federal Circuit reviews the decision of the District Court (not the PTO).

Costs

The cost of an appeal to either a District Court or the Court of Appeals for the Federal Circuit can be extremely high.  I have been quoted a price of approximately $500,ooo for a big law firm to appeal a case to the Federal Circuit.  For a relatively simple case with well-defined issues, I would personally carry out such an appeal for approximately $25,000 to $30,000.  A District Court case could be more, depending on the type of evidence to be submitted and other variables.

To hear me argue a case at the Federal Circuit, click here.

Timing

One way that knowledge of the performance system can be used advantageously by an applicant is by timing interviews and amendments to maximize the chances of allowance.  An Examiner’s performance is critiqued on a quarterly and yearly basis.  The government’s fiscal year begins October 1, which means that September 30 is the last day of each annual performance review period.  Other quarters end at the end of December, March, and June.  These times at the end of fiscal quarters, and particularly at the end of fiscal years, are the most hectic times of the year for Examiners.

If you try to schedule an interview or get an Examiner to act on a case in the last few weeks before the end of a fiscal quarter (and especially before the end of the fiscal year), an Examiner will often be unable to accomodate you.  They will simply be too busy trying to get a few more actions out to meet their goal for the quarter and/or year.

But, if you time your requests for a little before that time, perhaps a month or so before the end of a fiscal year, Examiners are often unusually receptive. At that time, every Examiner is eyeing their deadline and thinking about how they are going to get enough counts to keep their job or hit their next bonus.

One of the easiest ways for the Examiner to pick up another few counts is to allow a few cases.  Allowing a case takes maybe an hour for an Examiner to fill out a few forms and follow the necessary procedures.  It is much easier than writing a new first action on the merits or an Examiner’s Answer.

Therefore, an applicant will often meet with success in close cases when scheduling an interview for about a month before the end of the fiscal year (or the end of a fiscal quarter, if that is not possible) and trying to reach an agreement with the Examiner on an amendment that would result in allowance, with or without an RCE.

Appeals

Another strategy for dealing with Examiners in light of their incentives is to appeal rather liberally.  Appeals, although becoming more common, are still extremely rare.  A lawyer I know at a big firm commented that his firm almost never appeals for fear that an application would be rejected by the Board, preferring to file RCEs and continuation applications as necessary.  This leads to some boldness in the Examining corps, in my opinion.

Filing an appeal has several positive effects.  First, it tells the Examiner that you are not going to file RCEs over and over again no matter what he or she does.  An appeal signals that the RCE gravy train is about to come to an end.  They now know that the case is not going to get disposed unless it is allowed or it is seen by the Board, where the Examiner could potentially be embarassed and reversed.

Second, Examiners do not like appeals.  They do not like holding an appeal conference with their supervisor and, worse, a third party, who review the Examiner’s work closely.  They do not like writing Examiner’s Answers. They do not like being forced after an appeal conference to reopen prosecution and change their rejection without getting a count for it.  And they do not like being reversed by the Board.

Examiners do not expect to be appealed and are often suprised when it happens.  It puts them in another frame of mind, often a frame of mind in which they take the case more seriously and really think about whether there might be something in the application they could allow.

For those reasons, whenever an Examiner is uncooperative and is making what appears to be a clear error, I appeal.

Interviews

Another tool that can help get an application allowed even when an Examiner appears to be stringing an application along for RCEs is the interview.  I am a big believer in interviews.  It is too easy, even when you have good intentions, to just push papers past one another without really figuring out what the other person is saying when all communication is conducted in writing.  When dealing with a “bad” Examiner, not having to explain themselves to you or face you makes it much easier for them to do things that are really not proper.

Speaking with the Examiner gives you a chance to make a human connection and break through the bureaucracy.  Sometimes when I receive a really bad Office Action and call up the Examiner for an explanation (very politely), the Examiner will be embarrassed and apologize and offer to do something to clarify the rejection for the record. Most Examiners are not bad people, they are just humans working within the constraints of the Patent Office.  It is all too easy to fall into the trap of taking shortcuts to maximize the number of counts you get for a day’s work when you never have to see the people hurt by your actions and when you get rewarded with large bonuses for doing this.

Meeting with Examiners is therefore a good way to break through this cycle.  When I was prosecuting patent applications full time, I was on the phone with an Examiner almost every single day.  Often I would speak with several Examiners in one day.  In particularly difficult cases, I will go to the Patent Office and speak to the Examiner in person.  I have found that things get done in interviews.  Interviews are the best way to agree on an amendment (if necessary)  and achieve allowance.  If I can get the Examiner to suggest an amendment, that often seals the deal. Examiners often find it harder to reject their own wording than to reject yours!

It is very difficult for an Examiner to refuse to cooperate to your face, so usually you can get an Examiner to work with you in an interview to find something patentable.  And that is the way it should be.  Patent examination is not supposed to be adversarial.  Patent Examiners are not supposed to search for reasons to reject your application.  Rather, they are supposed to work with you to figure out what is patentable and to allow it.  Fortunately, I still find a lot of Examiners who know this too.  But for those that may be forgetting… the strategies above have been very helpful to me, and I hope they will be helpful for others as well.

Time

Between submission of the briefs and the Board’s decision, an Appeal typically takes about two years from start to finish.  This is a length of time during which you will not have a patent to enforce.  There is always the possibility that prosecution will be reopened, but by the time you find out, you typically will already have incurred the expense and delay of preparing and filing an Appeal Brief.  Therefore, if you need an early patent (for example due to an infringing product), it may be best to file an RCE if allowance is likely.

With the use of a request for a pre-Appeal Brief conference (discussed here ), it is possible to file a Notice of Appeal, receive a decision on whether prosecution will be reopened, and then file an RCE if it is not.  If there appears to be a clear error, this allows you to relatively quickly have that error corrected, or else file an RCE and proceed to the quick allowance you can get.

Note that, if it becomes necessary, an RCE can be filed at any point in the appeal process before a decision is reached.

Expense

An Appeal carries government fees of $510 for small entities, plus the cost of preparing and filing an Appeal Brief and Reply Brief.  This can be a hefty sum, close to $2500 even for an inexpensive attorney.  An RCE, on the other hand, carries $405 in government fees and requires submission of an amendment, which may cost as much as an ordinary Response.  Thus, the cost would be closer to $1500.  However, an appeal leads to a final resolution of the allowability of all claims (you can appeal a Board decision, but that procedure is very expensive ($10,000 and up, up, up) and therefore rare).

So in the short run, an RCE is the cheaper option. But in the long run, it may be more expensive.  If the Examiner finds new prior art or otherwise decides to reject some of your claims, it may be necessary to prepare and submit additional responses.  If you can only reach an agreement with the Examiner on some of the claims you want, it may be necessary to file a continuation application to attempt to get a patent for the remaining claims.  So, unless an RCE will result in allowance of all the claims you are going to want (which is not unusual), it is likely to be a more expensive option in the end.

Finality

When you file an RCE, the Examiner can always give you a new rejection, regardless of what they may have told you in an interview or Office Action.  Sometimes you may go in circles with an Examiner, always seemingly one RCE away from allowance.

One advantage of an appeal is that a decision allowing your claims is final.  There is almost no chance that a new rejection will be issued once the Board has indicated claims to be allowable.  Although an Examiner can reopen prosecution after an Appeal Brief is filed, but before the briefs get to the Board (and indeed this happens frequently), the Applicant always has the option of putting the case right back into appeal without paying any additional fees.  That is why an appeal is frequently an excellent choice when you feel that an Examiner is giving you “the runaround.”

Continuation practice

If the Examiner offers to allow your application with a narrowing amendment, accepting that offer does not mean you have to necessarily give up on the possibility of broader claims.  If the narrowed claims are still useful to you, you can accept them and allow them to issue as a patent.  Before the final publication of that patent, you can file a continuation application.

This application gets the priority date of the original application and has the same Specification.  However, you can write new claims for it, or pursue claims from the original application that were not allowed.  Of course, the new claims must be supported by the original specification.  Continuation applications are usually considerably less expensive to prepare than original applications. These applications generally are taken up by the same Examiner as the original application and in a shorter amount of time, typically 6 months to 1 year.

When an issued patent is needed, it is common practice to accept the claims allowed by the Examiner and pursue further claims in a continuation application.  In applications with some allowed claims, filing an RCE followed by a continuation is probably more common than an appeal, which as noted can tie up the claims for years.

Summary

When deciding between an RCE and an appeal, you will want to weigh each of these considerations.  If you need a patent soon, have a reasonable examiner, and have the opportunity to take some useful allowable claims, an RCE is probably more appropriate.  If you have been around the block with the Examiner, are uncertain whether the Examiner will agree to allow claims, and/or do not need an issued patent with any immediacy, an appeal may be the better option.

Filing an RCE with a substantive amendment to the claimed invention re-opens prosecution.  The Examiner will reconsider the case in light of your amendments, perform a new search if necessary, and allow your case or give you a new Office Action and new six month period for reply. Typically such an Office Action will be non-final, giving you an additional opportunity to argue the case and make amendments if necessary.  For a small entity, an RCE carries a $405 government filing fee.  For large entitites (over 500 employees and not a University) the cost is doubled.

Filing a Notice of Appeal costs $255 for a small entity and gives you two months to prepare and file an Appeal Brief.  This time period can be extended up to six months with escalating extension fees.  The Appeal Brief must be prepared in accordance with exacting requirements under the Manual of Patent Examining Procedure (MPEP) and is therefore costly.  A typical charge might be 1.5 to 2 times the cost of a Response.  Filing the Appeal Brief also carries a government fee of $255 for small entities. No amendments or new evidence can be submitted with the Appeal Brief.

After the Appeal Brief is filed, the Examiner will have a conference with his Supervisory Patent Examiner and with a technical expert and they will decide to either reopen prosecution or submit an Examiner’s Answer to the Board.  If the Examiner reopens prosecution, your case will either be allowed or you will receive a new non-final Office Action and a new six-month period to reply.  The Examiner will reopen prosecution if your arguments are persuasive, if there are mistakes the Examiner needs to correct, or if the Examiner feels that additional rejections should be made.

It is also now possible to request a pre-Appeal Brief conference when you file your Notice of Appeal.  An Examiner’s conference will then be conducted prior to filing of the Appeal Brief.  If the Patent Office decides to go forward with the appeal, you get the normal two months from the filing of the Notice of Appeal or one month from the date of the decision to go forward, whichever is later, to file a brief.  This is a good option when there is an obvious error, as in most cases prosecution will be reopened and you will save the expense of an Appeal Brief.

When the Examiner reopens prosecution, you have the option of re-entering the appeal process without paying an additional fee by filing another Notice of Appeal, or of responding to the new Office Action as normal. If you re-enter appeal, you file another brief, without paying another fee, that addresses any new rejections and the Examiner again has a conference and decides whether to re-open prosecution or enter an Examiner’s Answer.

If the Examiner submits an Examiner’s Answer, you get a non-extendable two month period in which you have the option of filing a Reply Brief in response to the points raised in the Examiner’s Answer.  A Reply Brief does not have all the formal requirements of an Appeal Brief and is typically about half the cost to prepare, or less.

Finally, all the briefs are forwarded to the Board of Appeals.  The Board consists of Administrative Patent Judges (APJs), typically drawn from the Examiners’ ranks.  They are generally very knowledgeable and are given enough time to fully address each Appeal.  Typically, approximately a year elapses between the time the briefs are forwarded to the Board of Appeals and the time that your appeal is considered.  A panel of three APJs will evaluate the briefs and issue a decision either affirming the Examiner’s rejections, reversing them, or affirming-in-part. If the decision is adverse, you have the option of filing a Request for Reconsideration.

If some claims are allowed, the application will be returned to the Examiner for final processing.  If only some of the claims are allowed, you can amend the application to accept issuance of a patent including the allowed claims.

If some or all claims are rejected, you can appeal the decision either to a Federal District Court or to the Court of Appeals for the Federal Circuit.  Either is a costly option.  Most appeals end at this point.  If all the claims are rejected and you do not choose to appeal further, your case will be abandoned.  Appeals to District or Circuit Court are another rich topic and will be covered in a future post.

Many times, even when facing a difficult rejection, I can find a way to tweak the wording of the patent application to satisfy the Examiner and achieve allowance of a strong patent.  But sometimes, it just isn’t possible to reach an agreement with the Examiner.  Sometimes you simply reach an impasse with the Examiner over a particular interpretation of the wording of the patent application or of the relevant law.  When you get “stuck” on an important issue where you have a disagreement with the Examiner and cannot get around it, it may be time to appeal.

Other times, something else is going on.  Patent examiners have gotten in trouble in the last few years for allowing too many patents, and especially for allowing too many so-called “junk patents” that some feel do not deserve patent protection and generate costly litigation. Therefore, there has been a recent emphasis in the Patent Office on “patent quality.”

In reality, the emphasis is often on rejecting a patent application using any available argument.  Patent Examiners can get in serious trouble if they allow too many patents, but almost never get in trouble for issuing improper rejections.  The incentive to reject applications is obvious. The result can be ever-changing rejections that are withdrawn or re-imposed in each Office Action.  This is a clue that the Examiner is looking for a way, any way to reject your application.  This may be the Examiner’s own initiative, or may be an instruction from his or her Primary Examiner or Supervisory Patent Examiner that they do not feel the application should be allowed.

Usually, when an Examiner is willing to acknowledge arguments of the Applicant’s counsel and modify his or her rejections, this is a good thing and indicates that the Examiner is reasonable.  But when an ever-changing array of different rejections of seemingly little merit are imposed over and over, it is time to stop working with the Examiner and go over his or her head to the Board of Appeals.