Appeals at the USPTO and EPO
IV. Options and effects of Appeals at the USPTO and EPO
IV. Appeal options at the USPTO and EPO
In many cases, filing an appeal is not the most economical solution compared to other procedural options such as Requests for Further Examination, After Final Consideration and/or continuing applications. Prior to filing an appeal, these other procedural options should be checked. That said, appeals may sometimes be mandated, for instance if a narrower parent patent issued and the Applicant feels entitled to a broader scope of protection, or if the Applicant has exhausted all other procedural options.
IV-A. Appeals at the USPTO
An appeal to the Patent Trial and Appeal Board PTAB is possible. Although the PTAB hears the case de novo, meaning that it does not lean to give deference to the factual findings by the USPTO Examiner, like the EPO it is also reluctant to accept entry of any new evidence during the Appeal procedure. It is therefore important to build up the docket while the application is still pending in the examination proceedings before the USPTO Examiner. This can also be easily done since the USPTO allows Requests for Continued Examination (RCE), so that as long as pending, through filing an RCE yet another option is created to bolster the docket by submitting evidence – for instance in the form of declarations and affidavits by the inventor or test results etc. The Appellant should further be aware that the form requirements for the proper format of the appeal are very high, often resulting in rejecting the appeal as inadmissible for a failure to comply with certain formalities.
Since the US patent system is very liberal on allowing Requests for Continued Examination (RCE) and several types of Continuing Applications and these options are fee-wise relatively affordable, the option of filing an appeal is in many cases just used as a last resort to move prosecution away from a specific Examiner since RCE’s and Continuing Applications do not solve this problem should an Examiner be firmly settled in his opinion and the Applicant disagrees. Grant rates vary widely between USPTO Examiners. Such grant rates can be viewed on an Examiner by Examiner basis at the website Examiner Ninja.
IV-B. Appeals at the EPO
Although an appeal option exists, specifically in recent years the EPO Boards of Appeal are reluctant to accept new claim requests that have not already been prosecuted before the Examining Division, and are also reluctant to accept new evidence. Further, over the more recent years, there appears a tendency at the Boards of Appeal of increasing deference to the Examining Division’s factual determinations and focusing more on reviewing whether the Examining Division made any specific errors. That said, depending on the specific technical field, the Boards of Appeal may take a more lenient approach than the Examining Divisions.
Worth mentioning may be that the appeal also keeps open the option to file a Divisional Application. Depending on how old the patent application is and therefore depending on the amount of accrued renewal fees that would need to be paid for a Divisional Application, filing an appeal may sometimes be the cheaper option at that point in time to keep the application at least pending in the appeal. However, filing an appeal for the sole purpose of maintaining the option of later filing a divisional application does not really pay off since the appeal fee and the grounds of appeal drafting work need to be invested for admissibility of the appeal, and on top of that additional renewal fees accrue both for the parent application and the later filed divisional application over the time span between filing the appeal and filing the divisional application.