In prosecuting a patent application, an appeal is not always the best option. But it also isn’t that bad an option. Currently, about 1-2% of applications go up for appeal. Based on the advantages that an appeal can provide, as well as the diminishing drawbacks, this low percentage of appeals means that many practitioners may be losing out. Here, we organize the eight advantages that appeals provide (either early in prosecution or late), as taken from previous blog posts.
Appeals help minimize unnecessary prosecution history estoppel – https://anticipat.wordpress.com/2018/01/30/how-appeals-can-stop-examiner-tricks-that-needlessly-undermine-patent-applications/
Appealing before an RCE gives you Patent term adjustment (PTA) B-delay regardless of the outcome on appeal – https://anticipat.wordpress.com/2018/01/18/how-appealing-a-patent-application-before-filing-an-rce-can-yield-big-b-delay-pta/
The ex parte PTAB backlog is plunging, meaning one of the biggest reasons not to appeal (speed of resolution) is less prohibitive. https://anticipat.wordpress.com/2017/12/13/the-ptab-ex-parte-appeals-backlog-is-falling-what-that-means-for-you/
Just by filing an appeal brief, you get another set of eyes in an appeal conference, giving you a chance that your application gets allowed or prosecution reopened even before a final decision from the Board – https://anticipat.wordpress.com/2018/02/12/appeal-conferences-can-advance-prosecution-by-giving-your-application-a-fresh-set-of-eyes/
Appealing an application generally is correlated with a more valuable patent. https://anticipat.wordpress.com/2017/11/28/does-appealing-a-patent-application-lead-to-a-more-valuable-patent/
Recent fee increases affected RCEs more than appeals. https://anticipat.wordpress.com/2017/11/15/uspto-increases-fees-for-ex-parte-appeals-less-than-initially-proposed-thanks-to-aipla-and-ipo/
You can recoup PTA C-Delay for entire appeal pendency when at least one claim is found not unpatentable on appeal: https://anticipat.wordpress.com/2017/11/03/will-you-get-c-delay-patent-term-adjustment-after-your-appeal/
Appealing to technically and legally trained judges can get your rejections overturned if your examiner is just not getting it. The high reversal rates may be higher than you think. https://anticipat.wordpress.com/2017/08/23/update-on-ex-parte-ptab-appeals-reversal-rates-high-reversal-rates-maintained-except-for-101-nonstatutory-rejections/
Are appeals underutilized? Perhaps. But some firms/companies are very strategic with appeals. They understand the value appeals give to their clients/themselves. More to come on that later.