© 2003, Dawsey Co., LPA
November 2003

The receipt of a final Office Action can be a very nerve racking event for a new inventor. Such inventors often experience anxiety, feelings of defeat, and, of course, the sense that the entire financial investment in the application is a loss. All inventors must recognize that receipt of a final rejection is not uncommon and that several options still exist at this point. In fact, there are two responses to a final rejection that are considered fully responsive; (a) an appeal, or (b) a request for continued examination (RCE).

Appeal
The rejection of an application by a Patent Examiner is appealable to the Board of Patent Appeals and Interferences, provided the appeal is timely filed and includes the appropriate fee. The Board is generally a three judge panel composed of former patent examiners. In order to be considered timely, the appeal must be filed while the application is still pending. In other words, the appeal must be filed before the period to respond to the office action has expired, which is generally three months for a final Office Action. The USPTO fee for filing a notice of appeal for a small entity is currently $165.

An appeal starts with the filing of a Notice of Appeal. The Notice of Appeal is a simple procedural document. Next, an Appeal Brief must be filed within two months after filing the Notice of Appeal. Inventors, now referred to as appellants, may obtain up to five additional months to file the Appeal Brief with the payment of the appropriate extension fee. The USPTO small entity fee for filing the Appeal Brief on time is $165.

The Appeal Brief must meet numerous USPTO requirements regarding the content. The bulk of the Appeal Brief is directed toward (a) identifying the issues presented for review, and (b) the arguments regarding each issue. Upon the filing of the Appeal Brief the Examiner must prepare an Answer. The Answer must meet a number of USPTO requirements directed to format and content, and most importantly, the Answer must respond to the arguments presented in the Appeal Brief.

The appellant is then given the right to file a Reply Brief, thereby giving them the last word before the Board. Additionally, the appellant may request an oral hearing of the appeal by the Board. Generally, an oral hearing should only be requested when necessary or desirable for a complete presentation of the appeal. Approximately fifteen to thirty percent of appeals involve oral hearings. Interestingly, many practitioners believe that appeals decided without an oral hearing receive more favorable outcomes. Additionally, the twenty minutes of oral arguments before the Board significantly increase the cost of an appeal.

The Board then considers the briefs and oral arguments, if any, and writes a decision. The decision may affirm or reverse the Examiner’s rejection in whole, or in part, or remand the application to the Examiner for further consideration. The decision must include specific findings of fact and conclusions of law sufficient for review should the decision be appealed. Often the Board will restrict the decision to a review of the rejections made by the Examiner.

This year, approximately 41% of the appeals decided by the Board reversed the Examiner, approximately 35% affirmed the position of the Examiner, and approximately 11% affirmed-in-part the position of the Examiner. Therefore, the odds of receiving a favorable outcome as the result of an appeal are quite good.

Request for Continued Examination (RCE)
The second type of response to a final rejection that is considered fully responsive is a RCE. An RCE is a type of continuing application. The RCE allows the applicant to file a second application to keep the prosecution of the first parent application alive after it has received a final rejection. The RCE application stays with the same Examiner that was reviewing the parent application and keeps the same serial number, yet the final rejection of the first parent application is removed. RCE’s can be thought of as simply paying an additional fee to buy another full examination of the application. A potential problem with RCE applications is that they stay with the same Examiner who will often repeat the same arguments without being receptive to new arguments.

Conclusion
While Office Actions containing final rejections can be intimidating, they do not necessarily mean the death of a patent application. In fact, filing an appeal of a final rejection before the Board of Patent Appeals and Interferences often results in an outcome that is favorable for the applicant.