TAKEAWAY: Reflecting on claim scope, the types of rejections at issue, and the position of the record may help Applicants and patent practitioners to decide whether to appeal a final rejection or continue examination.
As patent practitioners know, an Applicant for U.S. patent has various options to persuade the USPTO Examiner to allow a patent application. An Examiner issues a first, Non-Final Office Action if the Examiner decides the application is not in condition for allowance. If the Examiner still is not persuaded after considering the Applicant’s response to the Non-Final Office Action, the Examiner may maintain the rejection(s) and issue a second, Final Office Action, which generally closes prosecution on the merits. The Applicant generally can (i) file a Request for Continued Examination (RCE), which reopens prosecution, or (ii) appeal the Final Office Action to the USPTO Patent Trial and Appeal Board (PTAB).
Below are some factors to consider that may make it easier to decide whether to file the RCE or appeal.
Are the claims ready for appeal?
To state the obvious (no pun intended), if there are multiple grounds for rejection, possibly including a strong prior art rejection, an appeal may be premature. An Applicant no longer can enter claim amendments after a final rejection as a matter of right. Further, if the claims are somewhat vague or unclear, e.g., relying on the specification to explain what a claim term means, it may be better to file an RCE to have an opportunity to clarify.
Is the record ready for appeal?
An Applicant is also limited in the ability to submit new evidence after a final rejection. If an Applicant would like to submit an affidavit by a technical expert to support non-obviousness, for example, filing an RCE would ensure the evidence is of record. Further, if it appears that discussing the application with the Examiner may advance prosecution, it may be better to file the RCE to afford time for an interview. It is less likely that an Applicant and the Examiner will come to an agreement once the appeals process has begun.
Has Prosecution Come to an Impasse?
Sometimes the Applicant and the Examiner simply reach an impasse; the Examiner understands the Applicant’s position, and the Applicant understands the Examiner, but each side believes that they are correct and the other side is wrong. Additionally, an Applicant may be unwilling to further amend the claims depending on the desired claim scope. In such cases, the Applicant may consider appealing the rejections to seek review from the PTAB, taking the case out of the Examiner’s hands.
There is no “one size fits all” to determine when a case is ripe for appeal. Patent practitioners can take into consideration various factors when determining the best way to proceed to achieve the desired claim scope.