Unfavorable Patent Appeal Decision
An ex parte patent appeal decision by the PTAB that affirms an examiner’s rejections can seem like the end of the road, but you do have some options. You can go the litigation route by filing a civil lawsuit in federal district court or appealing to the Court of Appeals for the Federal Circuit. Cost-sensitive patent applicants will likely avoid such costly endeavors. This article will focus primarily on pursuing on the non-litigation options of filing an RCE, continuing application or a request for hearing.
Before diving into the non-litigious courses of action, here are your options after an unfavorable patent appeal decision:
- Request for Rehearing within 2 months of the patent appeal decision date by the Board;
- RCE within 63 days of Board decision date;
- File a continuing application within 63 days of the Board decision date;
- Civil action in federal court in the Eastern District of Virginia within 63 days of Board decision date; or
- Appeal to the Federal Circuit Court of Appeals within 63 days of Board decision date.
Why file a Request for Rehearing?
A Request for Rehearing would apply in limited circumstances where the Board has misinterpreted or overlooked material issues of fact. For example, an improper reading of a prior art reference that clearly states something different than the Board’s interpretations might qualify as a misinterpretation of material issues of fact. Overlooking statements in prior art references that contradict or exclude a Board finding may also warrant a request for rehearing. Note that the factual issues must be important. Insignificant facts, even if misinterpreted, might not justify a rehearing request.
Unlike the other post-appeal options, a request for rehearing must be filed within two months of the decision date. Deadlines for the remaining options will be reset to 63 days after the Board decides the rehearing request.
Generally, new arguments or evidence are not permitted in a Request for Rehearing unless the Board has designated a new ground of rejection or you believe the appeal decision contains an undesignated new ground of rejection. You may also cite a recent relevant decision of the Board or a Federal Court, and argue how the recent case should alter the Board’s appeal decision.
Why file a Request for Continued Examination (RCE) after a patent appeal decision?
A Request for Continued Examination may make sense if the applicant wants to reopen prosecution to introduce claim amendments, arguments, declarations or other new evidence. New evidence is not the same as new subject matter. For example, laboratory or experimental data to support the nonobviousness of certain claims might be new evidence, but not new matter.
As discussed below, new subject matter unsupported by the specification should be pursued in filing a continuation-in-part (CIP) application.
Why file a continuing application after an unfavorable appeal decision?
If the applicant has new matter that might help the claims to overcome the present rejections affirmed in the appeal decision, then filing a CIP could make a good deal of sense. A CIP might also refresh the relationship between the applicant and the examiner by giving the parties a restart with new claims. Neither side has to be bound by the old claims and accompanying arguments.
One potential drawback to filing a CIP is that the examiner may find additional prior art dated between the original priority date and the CIP filing date. In other words, prior art dated after your parent priority date but before your CIP filing date may now be cited against your CIP claims reciting the new matter. If and when that happens, you may need to consider further claim amendments to get past the new prior art.
