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.

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.