How Ex parte appeals work for a how it can create ways for quick allowances

We have seen from our experience that in many of the cases where ex parte appeals lawyers are required in those particular instances, throughout the majority of prosecution, Applicants face one person that is the decision-maker or the Examiner.

The Applicant and Examiner can communicate on various instances through paper that is by writing to the office actions and Amendments. Also through interviews.

In this process the applicant gets the understanding that consists of rejections that require an explanation, arguments are then later presented, and claims are amended.

But sometimes, these issues don't get fast closure and reach a standstill state. These cases occur when the parties cannot agree on whether the claims are patentable. Applicants can then choose whether to involve an ex parte appeal lawyers process. Which would allow the Applicant to present their case to other decision-makers, such as the Patent and Trial Appeal Board (“PTAB” or “the Board”).

The case cycle includes several stages. A Notice of Appeal must first be filed, and the Applicant has two months to file a full Appeal Brief that includes arguments.

The next step in the process is taken by an Examiner which is then to reply with an Answer, which is supposed to be issued within two months from the Brief of the case. The Appellant with the help of ex parte appeal lawyer thus has an option to (but need not) respond to the Examiner’s Answer with a Reply Brief. At this stage the Appellants must also pay a forwarding fee. The PTAB then after reading and understanding the case presents an argument and issues a judgment.

Despite the need of engaging different parties and decision-makers, most of the appeals are viewed as being associated with two major consequences: firstly, the long delays and the second is the cost. As observed in 2013, the average delay between an appeal being received at the PTAB and issuance of a decision was 26 months. As of now, for large entities, the USPTO fee for filing the Notice of Appeal is $800 and the forwarding fee is $2,000. Further, the ex parte appeal lawyer’s fees for preparing the Appeal Brief is $5,000. However, it is important to recognize that these delay and expense consequences primarily occur when an appeal completes a full cycle of the case.

Exits After Appeal Brief Are Rather Common

According to a study conducted by independent research firm the data gathered indicates that a substantial 19% of Appeal Briefs lead to the Examiner quickly passing the application in favour of the applicant.

More than 21% belong to the appeal cycle by the Examiner through an office notice. The allowances given post briefing and office notices were issued relatively quickly which happens to be on an average of 3 months after the Brief notice. This happens in such a way that the multi-year delay can be avoided. With the current fee structure that is being passed, these Appellants also would have avoided the substantial PTO forwarding fee which can reach up to $2,000 for larger firms.

Also one particular thing that we have seen is that a substantial portion of Briefs do result in issuance of new office actions from the authorities. We further found in the study the statuses of these applications. Moreover, one important thing is to notice that were they were left in a prosecution tribulation, or did prosecution become more fruitful? With 59% of these applications, a major portion of these application had been subsequently allowed to be patented. In these application 15% were still pending and 26% were left to be abandoned where no action was taken by the authorities or ex parte appeals lawyers. In total, 77% of the applications had a patented status.

Exits After Examiner’s Answer are Rare

For the remaining 60% of appeals those that “Move On” an Examiner’s Answer is issued. The vast majority of appeals having received though an Examiner’s Answer move on to be considered by the Board: Appellants filed an RCE or abandoned by the application which was seen to be only 0.2% at that time resulting in an issuance of an Examiner’s Answer.

It is not surprising that briefs initiated by Appellant are rare, as an Appellant recently made a decision to invest in the preparation of an Appeal Brief. Further, during the time period our data was taken, no fee was required to forward the appeal brief to the PTAB.

But today, large entities must pay a $2,000 forwarding fee to submit an appeal to the PTAB for consideration that comes after filing of the appeal brief and receipt of an Examiner’s Answer.

Despite this additional fee, a separate analysis of ours has shown that such Appellant-initiated withdrawals remain uncommon approximately which is roughly a 5% withdrawal rate responsive to Examiner Answers issued in calendar year 2020. This decision comes may be due to the investments done in the past by ex parte appeals lawyers’ fees to draft the Appeal Brief resulting in no new arguments from the Examiner in the Answer.

Conclusion

To conclude when an Applicant considers whether to appeal a rejection, the benefits or drawbacks of a full appeal should be considered by ex parte appeals lawyers.

Presently as advised by most ex parte appeals lawyers the Applicant should consider the fee as the attorney fees, including the PTO Notice of Appeal fee and the substantial forwarding fee, the Applicant would consider the multi-year delay of receiving a decision. Our data also indicates that, while these considerations remain relevant, they are not the end of the story.

Thus, we emphasize that data is subtle. Just as it is important to be aware of applicants’ unique goal for a given application. It is also important to undermine the complex distribution of potential outcomes of engaging in the appeal cycle which your ex parte appeals lawyers can help you understand.