How to Appeal Patent Rejection
The majority of patent applications are rejected the first time through the process, which involves a review by the patent board at the U.S. Patent and Trademark Office (USPTO). An applicant may request reconsideration after fixing the problem that resulted in the rejection. Upon second review, the board can either approve the application or give it a final rejection. It's after a final rejection that an applicant may want to file a formal appeal.
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Instructions
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Appeal Patent Rejection
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Consult with a patent attorney. Patent law is complex and to secure your patent it's usually necessary to obtain the services of an attorney who specializes in patent law. Your patent attorney should be able to help you understand why the patent was rejected and what you need to do to be successful in an appeal.
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Understand the part of the application at issue after the final rejection. If you feel that you have been wronged by the patent board due to a misreading or misunderstanding, you do have some recourse, thanks to a 2005 amendment to patent laws. With the help of your patent attorney, make any necessary corrections or additions to your application in preparation for an appeal.
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Pay an appeal fee and file a brief with your appealed application. Your attorney should assist you with this. Your appeal will be heard by the Board of Patent Appeals and Interferences, a three-person review board.
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Try a different route if you decide that you have different claims to offer or have new evidence to submit. Rather than an appeal, submit a request for continued examination, or RCE, to get the board to reconsider based on these new facts. You can get the necessary RCE form at the USPTO Web site (see Resources below).
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Appeal to a higher authority if you are rejected again and feel that you have a good case. The Court of Appeals for the Federal Circuit hears patent appeals regularly.
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Tips & Warnings
Since each stage of the approval and reconsideration process can take months, it makes sense to make your application as sound as possible when you first submit it. Use the services of a U.S. patent attorney for help in preparing your initial patent application. You can find a list of patent attorneys on the USPTO Web site.
Appealing a patent rejection can be costly in terms of attorney's fees and other fees, particularly if you appeal all the way to the Court of Appeals. If your patent has been rejected on fundamental grounds (e.g., it is not "novel"), consider whether or not getting a patent is really necessary for your business.
