A general guide on how to file, and what to do if your claims are rejected
To get a patent, an inventor must file a patent application at the U.S. Patent and Trademark Office. This article explains the patent process in general, what actions you can take, and how the Patent Trial and Appeal Board (PTAB) may figure into the process.
The patent application must disclose how your invention works and conclude with claims defining the boundaries of your invention. An examiner reviews your application to see if the claims meet the legal requirements for patentability.
If the patentability requirements are met, the examiner will allow the claims, and your patent will issue. But if the claims do not meet one or more of the legal requirements for patentability, the examiner will reject the claims in an “office action” explaining why they do not meet the requirements. You may respond to the examiner and argue why the rejection is legally or factually wrong and/or amend the claims to overcome the patentability rejections.
The examiner considers your response and then may withdraw the rejection and allow the claims. Alternatively, the examiner may disagree with your response and reject the claims for a second time.
After a second rejection, you may seek review of the rejection by appealing to the Patent Trial and Appeal Board (PTAB). In this process, a panel of three administrative patent judges will consider the examiner’s rejection and determine whether the examiner erred. Judge review of an examiner’s rejection is called an “ex parte appeal” because it only involves one party—the inventor.
To initiate an ex parte appeal to the PTAB, you file a notice of appeal and pay the required fee. You then have two months to file an appeal brief, explaining why the examiner erred. Then the examiner will file an answer to the appeal brief, and you will have the opportunity to reply to the examiner’s answer.
A panel of three PTAB judges then reviews the entire record.
You may request an oral hearing to verbally present your case before the judges. Examiners usually do not participate in oral hearings.
Results of PTAB appeal
The PTAB can affirm or reverse the examiner’s rejection, in whole or in part. An affirmance means the judges agree with the examiner’s rejection. A reversal means the judges disagree with the examiner, and the application is sent back to the examiner. At that point, the examiner can either allow your patent to issue or re-open prosecution of your application.
In rare instances, the PTAB may issue what is called a “new ground of rejection.” You have two options if this occurs: (1) reopen prosecution; or (2) request rehearing before the PTAB.
To reopen prosecution, you reply to the new ground of rejection with new evidence and/or amend the claims—which sends the application back to the examiner. Examination proceeds as if the new ground was raised in a first office action.
To request a rehearing, you must file a brief explaining why you feel the PTAB’s decision was incorrect. If the rehearing is not successful, reopening prosecution is still possible.
The USPTO maintains a roster of registered patent agents and attorneys you can consult (see oedci.uspto.gov/OEDCI/).
For those inventors with limited financial resources, the USPTO sponsors three programs that help qualified inventors find legal assistance. The Patent Pro Bono Program and Law School Clinic Program are available during the examination process. The PTAB Pro Bono Program may assist you with appeals. See “Patent Trial and Appeal Board Pro Bono Program for Independent Inventors” at uspto.gov.
The PTAB offers several resources to help with appeals, including an Appeal Brief template (uspto.gov/patents/patent-trial-and-appeal-board/resources/preparing-ex-parte-appeal-brief) and monthly Inventor Hour webinars (uspto.gov/about-us/events/inventor-hour-events).