An advantage of appealing a patent application is to avoid unnecessary and narrower claim amendments and prosecution history estoppel. So rather than seek to appease an Examiner in an effort to overcome a particular rejection (with no guarantee of an allowance), appellants can ask the Board to directly overturn the Examiner. But an appeal comes with a sometimes heavy cost of significant time spent in the appeal process. For this reason, PTA can compensate for this time if the appeal is successful. In some industries, this PTA translates into big money. But when exactly does an appeal result in an applicant getting the patent term adjustment?
While appeal outcomes come in varying degrees of wins and losses for the appellant, C delay is an all-or-nothing reward. In short, C delay is rewarded whenever the Board overturns an unpatentability finding of at least one claim. This is how the USPTO interprets the statutory and rule language of “delay due to the review reversing an adverse determination of patentability”. See 35 U.S.C. § 154(b)(1)(C) and 37 CFR § 1.702. When only one ground of rejection is being decided, this means that either an affirmed-in-part (at least one claim reversed) or a wholly reversed outcome (all claims reversed) will lead to the C delay. When the Board decides multiple grounds of rejection, as long as none of the Examiner’s rejections survives with respect to one claim, an appellant will get PTA C delay.
Another way of looking at it is that an applicant will get C delay as long as the decision is not designated “affirmed.” We previously reported how the USPTO’s designation of “affirmed” is misleading and overly simplistic, which means that the appellant must be aware of simple procedural techniques that could deprive of precious PTA.When considering an appeal with the best chance of securing C delay, you should use Anticipat.com to help you consider three things.
First, assess the rejection depth of the claims. By rejection depth, the number of rejections associated with each claim (the greater the depth, the more rejections for each claim on appeal). The higher the rejection depth, the more likely you’ll get an affirmance and no C delay. This is because if all claims stand rejected under multiple grounds of rejection, there is a high chance that one of the rejections will stick. While it is possible for the Board to overturn each and every ground of rejection, with more rejections applied to the claims, the less likely this happens. This is in part due to the grounds of rejection having remarkably stable reversal rates, whether the appeal includes one or more grounds. In a recent decision, where four grounds of rejection were on appeal, the 101 rejection was affirmed, which masked the Board’s reversal of the 112(b) indefiniteness rejection, the 102 anticipation rejection and the 103 obviousness rejection. This meant that the application is ineligible for C delay for this appeal. All it takes is one rejection to carry the day against C delay.
Second, look at the track record for your application’s specific appeals–whole reversals and partial reversals. Some rejections (such as Section 101 patent-eligibility and obviousness-type double patenting) are all or nothing: all claims get reversed or all claims get affirmed. This is reflected in the percentage of “affirmed-in-part” outcomes for these grounds of rejection. For example some rejections, such as 102 or 112, have a relatively large affirmed-in-part category, creating a wide spread of the likelihood of overturning at least one claim. Other grounds, such as a Section 101 rejection, have a relatively low chance of being overturned even including affirmed-in-part. And this also includes the affirmed-in-part spread. Because it only takes one reversed claim to avoid an affirmed outcome (and hence qualify for C-delay PTA), look to the total combined statistic between pure reversals and affirmed-in-part outcomes. See the below graphs to see the different spreads for overturning at least one claim. The thick orange sections add significantly to the overall reversal rate of the rejection. For Section 102 and 112, the overall reversal rate approaches 60%.
Third, render moot grounds of rejection you do not plan to contest before appealing or argue all of your grounds of rejection in the appeal brief. For one reason or another, quite a few appellants choose not to argue an appealed ground of rejection. This can be because they plan to make a minor claim amendment (such as to overcome a 112 rejection), they plan to file a Terminal Disclaimer (to overcome a double patenting rejection), or they plan to make an amendment to avoid a nonstatutory subject matter rejection (such as by adding non-transitory). This can be a mistake. In these cases, if these non-substantive outcomes apply to all the claims at issue, the entire case is affirmed and there is no PTA C-delay. For example, in Ex Parte Le Bot et al, the appellant did not argue a Section 112(b) indefiniteness argument even though its arguments succeeded in reversing the 103(a) argument. The result was an affirmance for the appeal and no possible chance for C-delay. A practice tip is that if you have a loose end to wrap up, resist the urge to take care of this loose end before or after the appeal.
It is good practice to be strategic about appeals, especially when patent term is important. Since it is difficult to predict which patents will eventually find this added patent term to be precious, better to be safe than sorry.