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APPEALING A REJECTION AT THE PATENT BOARD OF APPEALS: ANALYSIS OF RECENT BOARD DECISIONS AND NON-APPEAL ALTERNATIVES

This article discusses the merits of appealing rejections to the Board of Patent Appeals in comparison to continued ex parte prosecution before the Examiner. The analysis takes into account recent decisions rendered by several patent panels and recent precedent of the Court of Appeals for the Federal Circuit. Recommendations are offered to place claims in better condition for appeal and for the types of arguments to be made, as well as to guard against potential pitfalls during prosecution. I. TIMING FOR APPEAL {1} The timelines for Appeal and ex parte prosecution become intertwined, because the U.S. patent statute permits appeal of a rejection in the following circumstances: “[a]n applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Board of Patent Appeals and Interferences, having once paid the fee for such appeal.” 1