Appeals

When the Patent Examiner rejects the patent's claims twice, the second rejection is typically a FINAL ACTION. We can send in one last argument, but the Examiner does not have to consider it. If we do not agree with the Examiner's rejection, an appeal is necessary. Appeals are a complex process involving several papers exchanged between us and the Examiner. We first send in a Notice of Appeal with a $840 fee (2024). This is a simple 1-2 page form. Sometimes the actual threat of an appeal causes the Examiner to reconsider and allow some claims. Otherwise, we next file an appeal brief within 2 months. Then the Examiner writes the Examiner's Answer. Sometimes we need to write a Reply Brief. Then the Examiner can write one last Supplemental Examiner's Answer. Finally, the briefs and answers are sent to the Board of Appeals, along with another $2360 fee. About 2-3 years later, a 3-person panel of Administrative Law Judges at the Patent Office reviews the case and writes a Decision. Appeals are quite rare. I have had only one case go to appeal out of over 100 cases that have been fully prosecuted or issued. We won that appeal. You can read the Appeal Brief I wrote and the Decision of the Appeal Board. The Appeal Board completely rejected the Examiner's arguments and overturned the Examiner on all claims. You can see the issued patent here. Costs Appeals are time-consuming and expensive. The 40-page Appeal Brief alone took 33 hours to write and edit, a cost of about $5000 at then-current rates. Of course, this was a very complex technology (a combination RISC and CISC microprocessor) and other appeals should be less expensive, perhaps as little as 2-3 K$. Proceeding through the Notice of Appeal is much less expensive, and often forces the Examiner to reconsider, since the Examiner's rejection is reviewed by 2 other Examiners before the decision to continue the appeal is made at the PTO. If the Examiner reconsiders, we can get some claims allowed without going through the entire appeal process. Filing the Notice of Appeal is especially useful when the Examiner's arguments seem outrageous, since oftentimes the Examiner is a very junior person. The Notice of Appeal causes the Examiner's supervisors to get involved. Sometimes the full appeal is avoided. Time The appeal delayed the patent issue by 2.5 years. It was a total of 4.5 years from the filing of  the patent until it issued.

Stuart T. Auvinen Patent Agent Reg. No. 36,435

gpatent@gmail.com

gPatent LLC 429 26th Ave. Santa Cruz, CA 95062 (831) 476-5506

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