Should I file an appeal with the Patent Trial and Appeal Board (PTAB) if my claims are rejected by the examiner in a final office action?
The current success statistics for patent applications on appeal is around 30% that all rejections are reversed and an additional 10% that at least some rejections are reversed (40% total). The current USPTO fees to file an appeal are also quite high (Notice of Appeal fee of $840/$420/$210 and Forwarding fee of $2360/$1180/$590 for regular/small/micro entities). In addition, it can take several years for the PTAB to render a decision on the appeal. Finally, if the PTAB decision affirms the examiner's rejections, the only option is to appeal the PTAB decision to the Federal Courts which is extremely time consuming and expensive.
One of my large corporate clients has been testing a new strategy with finally rejected patent applications where instead of filing a PTAB appeal, they bring on another law firm to assist with the prosecution. At first I was offended by this decision given the effort I infuse into every patent application as well as the confidence in my legal arguments. However after seeing first hand the beneficial effect, I now fully agree this is the best strategy moving forward. Instead of being offended by a different law firm helping prosecute the application, I actually recommend this practice for a couple of reasons.
First, the original patent attorney working on a patent application can become overly focused on a particular legal strategy without realizing there may be additional helpful arguments that can be presented to the examiner. Having a different law firm review the entire application and prosecution history can lead to helpful suggestions on how to improve the legal arguments.
Second, and I think more importantly, having a different law firm help with the prosecution means there is a completely different patent attorney asserting patentability arguments to the examiner, thereby creating a "Two Against One" scenario. Not only is the examiner presented with additional legal arguments, but there are two independent legal entities arguing the claims are patentable. Even if only subconscious, I believe the examiner's perception of the claims changes when multiple independent legal professionals make convincing arguments. I believe the examiner's perception changes from "I'm tired of arguing with this stubborn patent attorney" to "well... if a different, completely independent patent attorney believes the claims are patentable... maybe I'm wrong."
In order to achieve maximum effect, the patent application should be transferred (at least temporarily) to the new law firm via a Power of Attorney (which also authorizes the new law firm to prosecute the application in front of the USPTO). In other words, the examiner should understand a completely new law firm is now responsible for prosecuting the application as opposed to simply having a different patent attorney within the same law firm "take over."
After transferring the patent application to the new law firm, the new patent attorney should contact the examiner to communicate the change of representation and request a telephone interview with the examiner. It may be necessary to file a Request for Continued Examination (RCE) in order for the examiner to consider the new arguments, but this is far less time consuming and expensive than a PTAB appeal (while retaining the option of appeal if needed).
Disclaimer: All viewers agree no professional liability arises from anything posted on this website.
If you found this posting helpful, please donate to the author's bitcoin address:
About the Author: Howard Sheerin is a California licensed patent attorney having drafted and prosecuted over 800 complex electrical and computer patent applications. Mr. Sheerin offers a free review of pending patent applications under a final rejection, including how the claims might be amended to overcome the rejection, and potential arguments for traversing the rejection. Mr. Sheerin can be contacted by phone at 415-238-4007.