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Patent Guide: VIII. Appeals

If your patent application is twice rejected, it is typically marked "final." You can do one of four things at this point:

1) Give up.

2) Pay more money to the patent office for two more chances.

3) Narrow your claims and ask for them to be re-examined again.

4) Appeal.

We're going to discuss a little about option 3, here. Thankfully, to date, we have only needed to do this once (and won, of course). One pays a small additional fee to the U.S. Patent Office and typically starts with a "Pre-Appeal" brief. This is a five page document, maximum, where one lays out why the Examiner is wrong. A committee of four people reviews the pre-appeal brief (usually): the Examiner, the Examiner's supervisor, a specialist in the technology area, and a fourth, usually from the quality control department.

To give an example of when to appeal, in one case handled by this firm, the Examiner was citing a reference which we invented after that of our client. We had proven that to the Examiner, he agreed, but still gave us a second rejection citing the same reference. We called him and got nowhere. We called his supervisor and got nowhere. So . . . we appealed. (Today, there is a "quality control department" we could have called which probably would have precluded the need to appeal, but it didn't exist at the time.)

Here's an excerpt from our appeal, for your pleasure:

The Final Office Action states, the evidence and affidavits submitted by the applicant show that the invention was made prior to August 31, 2009, since the rejection is made under 102(e), the prior art has a right of priority that reaches back to the provisional application no. 61/190586, filed on August 29, 2008. However, as noted in MPEP.  706.02(f)(1)(I)(B), the subject matter used in the rejection via a non-provisional application must also be disclosed in the earlier-filed application (e.g., the provisional application to which priority is claimed). This issue has been addressed in In re Giacomini, appeal no. 2009-1400 (decided July 7, 2010), the decision stating that the provisional application must provide written description support for the claimed invention. Here, the Office Action gives no analysis whatsoever to show that the material relied on in the 2010/0050956 reference was actually contained in the provisional application in a manner sufficient to satisfy 35 U.S.C. § 112, first paragraph and/or reaching back to the filing date of the provisional. Rather, the Final Office Action simply includes a naked assertion that the provisional application is prior art, with no further explanation or citation to the actual disclosure of the provisional application. The Office Action almost entirely refers to Figure 2 when there isn't even a corresponding figure (or any figures) in the provisional. Applicant notes that the Patent Office has the burden to analyze the priority document and show support for the rejection, and this has not been done. For this reason alone, the rejection under 102 should be reversed.

After you win your appeal, the case goes back to the Examiner for further review or goes on to issuance. The former is most common.

Let's move on to the part everyone really wants - NOTICE OF ALLOWANCE.

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