Donald J. Ersler, S.C.

When To Appeal An Office Action

The time to appeal an office action is when the examiner refuses to acknowledge that their prior art rejections have been overcome by amended claims and/or patent attorney arguments.

Reasonable and unreasonable rejection by the patent examiner

My goal is to get a patent application allowed after a first office action by communicating with the examiner through a phone interview to assure that the amended claims overcome the prior art rejections. An allowance after a first office action is not always possible, because the examiner has to go back and do a second patent search on the newly amended claims. If the examiner finds new prior art that the amended claims read on, they will issue a second or subsequent office action. As long as the prior art rejections are reasonable, a response to the office actions should be filed. However, if the rejection in a second or subsequent office action becomes unreasonable, there is a solution.

Training of new patent examiners

Twenty five years ago, the training of patent examiners was much different than it is today. The patent examiner’s academy as of at least ten years ago, were instructing their new recruits to throw any prior art at the invention in an office action to see if it sticks, or hope the inventor gets discouraged and gives up on getting a patent application issued. The motivation for the Patent Office’s academy teaching lies in the interpretation of 2007 Supreme Court case of KSR v. Teleflex (KSR). KSR makes it easier for a patent examiner to combine unrelated prior-art references (patents, published patent applications or publicly accessible documents) to reject the claims of a patent application.  Unfortunately, the newly trained examiners of today are even more likely to make unreasonable rejections then ten years ago. If the examiner was trained before KSR, you are more likely to get a fair examination, then if the examiner was trained after KSR. However, the Patent Office does have a mechanism to deal with unreasonable examiners and supervisors. It is called the Board of Patent Appeals. The examiners and especially their supervisors do not like to have their rejections reversed.

There is a process called a pre-appeal, where a pre-appeal brief is reviewed by the examiner, the examiner’s supervisor and a supervisor from a different art group. A notice of appeal is filed and a five page argument is filed. The pre-appeal may be useful, if you are dealing with a primary examiner. However, the pre-appeal is usually a waste of time, if the examiner is following the lead of a primary examiner or a supervisor. The best way to deal with an examiner who is making an unreasonable rejection is to file an appeal brief. If the supervisor thinks the appeal will be lost, they will either find a reasonable grounds of rejection, or simply issue a notice of allowance. Both the pre-appeal and the appeal cannot be filed, until a second office action is issued.

Even if the supervisor lets the appeal go through, there is at least a 50 percent chance or probability that the Board of Appeals will reverse the examiner’s rejection completely or in part. The full-fledged appeal will take about one and one half to two years to get a decision from the Board of Appeals. If the examiner rejections are reversed, the supervisor will usually honor the Board of Appeals decision and issue a notice of allowance. In response to the notice of allowance, the patent attorney will pay the issue fee and file issuance paperwork. A patent will issue in one to two months, after payment of the issue fee.