Appeal Board – Shorthand for the Board of Patent Appeals and Interferences (BPAI).  The Board consists of Administrative Patent Judges (APJs), typically long-time Examiners with good records.  An examiner’s second rejection of one or more claims can be appealed to the Appeal Board.

Claims – A patent application must include a section that specifically sets out what the inventor claims is entitled to patent protection as a new, non-obvious invention.  The section begins “I (or We) Claim:” and a numbered list follows.  Each number is referred to as a “claim” and is examined separately by the Examiner for compliance with the patent law.

Examiner – An examiner is an employee of the United States Patent and Trademark Office and examines either patent or trademark applications for compliance with the law.  If the application is not in compliance with the law, an Office Action is sent out by the Examiner explaining why.  If the application does comply with the law, it will be allowed to issue as a patent or registered trademark, as the case may be.

Office Action – This is a document sent to the applicant or applicant’s representative from the Examiner at the Patent Office explaining why a patent application is not in condition for allowance. An Office Action is only sent if one or more of the claims of an application is rejected.  If all the claims are in condition for allowance, the Examiner will instead send a Notice of Allowance.

Patent Prosecution – The process of applying for and receiving a patent from the United States Patent and Trademark Office (USPTO or just “PTO”). Preparing and filing an application, responding to Office Actions, and appealing to the Appeal Board all fall into this category.  Sometimes, due to the word “prosecution,” someone will think this refers to suing people who infringe patents, but it doesn’t. That would be patent litigation.

PTO – Short for United States Patent and Trademark Office.  This is an agency of the United States government and a division of the Commerce Department.  It is responsible for examining patent and trademark applications for compliance with the law.

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.

I do not suggest you represent yourself

First things first- should you represent yourself?  There is only one good reason to do so- cost .  Filing yourself will save you attorney’s fees which can range from $5,000 to $20,000 or more over the application process.  But there are many reasons not to go it alone.  First, those cost savings may not be as great as they first appear.  You have to account for the cost of your own time.  At the minimum, you have to value your time at a lower value than the hourly rate of a patent attorney (generally $200 and up) to make it worth your while.

But you also have to take into consideration that patent attorneys are specialists in patent prosecution who may work on hundreds of applications in a year and as a result are more efficient than a lay-person.  Unless you are very familiar with all aspects of patent prosecution, including necessary forms and submission procedures and relevant case law and MPEP guidelines, it will probably take you at least twice as long as it would take a patent attorney to do the same amount of work.

Furthermore, it is not reasonable to expect that you will manage to obtain the same results as a good patent attorney.  As with any legal matter, familiarity and experience are critical.  It may be true that you know your invention better than anybody else, but you probably do not know the law better than anybody else, and knowledge of the law is critical to obtaining solid patent protection.

Any statement you make over the course of prosecuting your patent application can be used against you in the future, not just by the patent office, but also by infringers who seek to invalidate your patent years later. If you do not draft your claims correctly, or follow the suggestion of an Examiner and amend them too narrowly, you may find your patent provides you with little protection and is of no use to you other than as a decoration.  A single word may be the difference between protection and a lack thereof.

Worse, there may be no way of knowing whether you have made such a mistake or not.  Any test by an infringer may come years after your patent has issued.  Imagine the following scenario: you draft and file an application, successfully prosecute it and obtain an issued patent, and begin building your business in reliance on the protection your patent provides.    You bring in investors, sink your capital into manufacturing capcity, ink deals with distributors, and begin a marketing campaign.

Then you find a large corporation has stolen your idea and is marketing it in an identical fashion.  You threaten to sue and they refuse to negotiate, saying your patent is invalid.  The company sues you preemptively and the court declares your patent invalid.  In the meantime, you have gotten several more patents the same way.  Are they invalid as well?  Suddenly, the solvency of your business is in question.

When you invest in a good patent attorney to prosecute your patent applications, you pay a little money up front to potentially save you enormous amounts of money down the road. I would rather pay a good patent attorney to get me valid patents that stand up to scrutiny than pay a great patent litigator to save my butt in court after my patents are challenged.  As in many legal matters, you can pay a lawyer a little up front, or a whole lot down the line.

When should you do-it-yourself?

So, you get the idea.  I do not think it is a good idea to prosecute your own patent applications.  When might it be okay to do so?  Well, when you are not worried about the problems I outlined above.  Maybe you are a patent attorney yourself.  Maybe you are not interested in going into business and only want official acknowledgment of your invention that you can hang on the wall.  Or, maybe you just don’t have any money and have no choice.  But unless you really are flat broke, in which case I wonder if you should be spending your money on government fees, you might be surprised how affordable good representation can be.

Alternatives

Find a good solo practitioner or small firm to that you are comfortable with (more on making this selection in the next post) and let them know that money is a concern.  Do as much of the work as possible yourself, but make sure everything is reviewed and submitted by your lawyer.  By doing this, particularly if you are familiar with the patenting process, you can cut costs a great deal.  You might be able to cut your costs to $6000 or $7000 over 5 or 6 years.

If you cannot afford that, you might be better served to get a provisional application filed.  This is relatively inexpensive, and may cost $1500 or less.  If you prepare the application yourself, it might cost as little as a few hundred dollars.  There is risk in this, though (more on that in a later post).  Once your provisional application is filed, you have a filing date and a pending application and can talk to others about your invention without worrying too much about your idea being stolen.  Investors will also take you more seriously with a pending patent.

Now, make the rounds.  Try to get someone interested in your invention.  You have 12 months from the date your provisional application was filed before you need to file a full utility application.  If you can bring investors on board before that time, you can use their money to pay for the application.  And more than likely they will recognize that this is a good use of their money and a solid investment.

In the next post, I will discuss the factors to consider in selecting your representative.  If I have overlooked anything in this post, let me know by email or in the comments.