Can I Appeal a Patent Rejection?

If you have ever applied for a patent, you know how frustrating it can be to receive a rejection from the U.S. Patent and Trademark Office (USPTO). A patent rejection means that the USPTO has found some reason to deny your patent application, such as lack of novelty, obviousness, or insufficient disclosure. The USPTO issues patent rejections during the patent examination process by sending an official letter called an office action. Patent office actions list any legal problems that the Patent Examiner finds with a patent application, such as rejections and objections. You, as the applicant, must respond to the office action within a certain amount of time in order to keep your patent application alive.

There are two main types of patent office actions:

• Non-Final Office Actions. Non-final office actions are issued when the patent examiner has found some problems with a patent application, but the examiner believes that the application can be fixed. The applicant can respond to a non-final office action by amending the patent application to address the examiner’s concerns or presenting arguments to the examiner that are sufficiently convincing to allow the patent application.
• Final Office Actions. Final office actions are issued when the patent examiner has found problems with the patent application that have not been fixed in a response to a non-final office action. For example, the examiner may have found that the invention is not patentable or that the claims are not clear and concise, even after presenting arguments and/or requesting amendments in a response to a non-final office action. The applicant can still respond to a final office action, but it is more difficult to get a patent granted after a final office action has been issued.

If you do not respond to a patent office action within the deadline, your patent application will be abandoned. If you do respond to a final office action within the deadline and the patent examiner still rejects your application, your application will be denied registration.

That said, just because your patent was initially rejected after a final office action and denied registration, that doesn’t mean that it’ll never see the light of day. Fortunately, you may still have a chance to appeal the rejection and convince the USPTO that your invention deserves a patent. Please continue reading and reach out to Lemler IP to learn about how a skilled intellectual property attorney can help you appeal a patent rejection. Here are some of the questions you may have:

How can I appeal a patent rejection after final office action?

If you receive a patent rejection after responding to a final office action, you have the right to appeal the decision to the Patent Trial and Appeal Board (PTAB), which is an independent body within the USPTO that reviews adverse decisions of examiners. To appeal a patent rejection after final office action, you need to follow these steps:

1. File a Notice of Appeal within three months of the final office action, or within six months with extension fees.
2. File an Appeal Brief within two months of the Notice of Appeal.
3. Pay the Forwarding Fee within two months of the Examiner’s Answer, which is a document that responds to your Appeal Brief and defends the rejection.
4. Wait for the PTAB Decision, which can take several months or even years to be issued, depending on the backlog of cases.

What are some circumstances that may warrant a successful appeal?

Appealing a patent rejection after final office action can be a costly and time-consuming process, so you should carefully consider whether it is worth pursuing. Some circumstances that may warrant a successful appeal are:

• The examiner has misinterpreted or misapplied the prior art
• The examiner improperly ignored or rejected your evidence
• The examiner made an error of law or fact

For further questions, or if you need a New Orleans, Louisiana patent lawyer to help you appeal a patent rejection after final office action, simply contact Lemler IP for guidance today. Lemler IP has years of experience representing clients facing a broad range of IP matters, including patent rejections, and is prepared to put that experience to work for you in your case as well.