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.