Patent prosecution has a bevy of procedural options for a wide range of preferences. For those who want to maximize the life of the patent and aren’t impatient in getting the grant, some strategies promote maximum patent term. Here, we discuss how appealing a patent application can promote patent term adjustment (PTA), even if the appeal is unsuccessful.
We recently reported on how a successful appeal (not unpatentable for at least one claim) can result in C-Delay PTA. This gives all the time wasted in getting a favorable disposition from the Board back to the patent’s term. But if the appeal is unsuccessful (i.e., the decision comes back upholding a rejection with respect to all claims), and the application does eventually get granted, B-Delay can still replenish this lost time as PTA. But to do so, it must follow a certain timeline.
In general, B-delay is available when the USPTO does not grant a patent within 36 months. That is, every day over the 36-month mark that it takes to grant your application goes into your B-delay PTA. But B-delay is unavailable for the time after an RCE is filed. This point has implications for deciding when to appeal a decision, especially since the appeal process can be long and since not every appeal will be successful.
Under this approach, appeals are used strategically rather than as a procedure of last resort. Instead of filing an RCE to continue examination, an appeal is filed. Many applicants, do indeed use appeals strategically. If the appeal is affirmed, and if an RCE is filed to continue examination and the application eventually does get granted, then does the
An example shows this approach in action. US Patent No. 9,701,462 was recently issued with a whopping 2,230 days of PTA. The secret to over six years of PTA? Appeals. After receiving a Final Office Action, the applicant straightway appealed. The Board affirmed the Examiner, but introduced a new rejection. Subsequently, the applicant responded with an Amendment. The Examiner responded with a Final Rejection, after which the applicant appealed again. This time on appeal it was affirmed-in-part. Because an RCE was never filed, it qualified for 1231 days of B-delay.
This appeal-before-RCE strategy is difficult to pursue in practice—not a trivial or whimsical exercise. It takes preparation to make sure all the necessary evidence is on the record and that the claims are just the way they should be for appeal (before a Final Office Action closes prosecution). Indeed, you may want to front-load much of the back-and-forth work with the Examiner with at least one interview.
Another difficulty is more psychological. Some examiners may confuse the situation by offering a hope (sometimes a false hope) that prosecution is close to concluding. Then the practitioner believes that just one more narrowing amendment is needed. But is this one little amendment needed to allow the case? Or is it needed to overcome the current rejection? Or will the Examiner not even commit to that one narrowing amendment overcoming the current rejection? Many cases with long prosecution histories are made through a series of small amendments.
However difficult it is to front-load the work at the first response, and however difficult it is to weed through the hopeful assurances of the Examiner, appealing early on can pay off big dividends in the form of PTA.