Ex Parte Appeal

By Lia Kopin-Green
/
August 30, 2022

What is an Ex Parte Appeal?

When a patent examiner rejects a patent application more than once or issues a final rejection, the applicant can appeal the rejection before the Patent and Trial Appeal Board (PTAB). It is considered an alternative to prosecuting the Examiner. In these cases, the applicant is prohibited from making additional substantive amendments or changes to the application prior to the appeal hearing.

The Examiner's decisions regarding a pending patent application will be thoroughly reviewed during the appeal process. Since the PTAB is not responsible for issuing patents, the Board will simply choose to affirm or reverse a patent rejection.

Key Takeaways

  • Ex parte appeals are motions petitioned to the Patent and Trial Appeal Board (PTAB) following two rejections or a final rejection of a patent application.
  • This is not an opportunity to make amendments to the application or submit new evidence.
  • In an ex parte appeal, an Examiner's decision in a pending patent application is reviewed.

More On Ex Parte Appeals

There are two situations in which an ex parte may be filed: following a twice rejected application or after being served with a final rejection.

Once you receive the second rejection or final rejection, you have three months to file the appeal. There is often an option to extend this time period by an additional three months. You must give notice that you intend to appeal the Examiner’s decision. An appeal fee will also be charged.

After the appeal is filed, the applicant will typically prepare documentation that claims the rejection is improper and stipulates it should be re-examined. The Examiner’s reasons for rejection are then reviewed by a panel of at least three administrative patent judges. These judges, who have been appointed by the Secretary of Commerce, often have technical backgrounds to thoroughly understand patent applications. The PTAB will decide whether to maintain their decision at the hearing. The hearing also gives the application the opportunity to make an oral argument before the panel of judges. Following the hearing, the Board will issue an affirmation, an affirmance in part, a reversal, or new grounds for rejection for the patent application via written notice.

If the PTAB still does not agree to approve the applicant’s patent, he or she can request for reconsideration by the Board or federal district court review. Moreover, the applicant can appeal the PTAB’s decision to the United States Court of Appeals for the Federal Circuit.

Bottom Line

Patent rejection notices often include information about why the patent application was rejected and the requirements that were not met. However, you may not always agree with the Examiner’s decision, and it is important to keep in mind that you always have the right to appeal the second or final rejection. Having an experienced intellectual property attorney on your side is crucial since ex parte appeals often involve extensive paperwork and a formal legal hearing. Find a top IP lawyer with Attorney at Law.

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