Failing to get a favorable decision from a patent examiner isn’t the end of the line, but escalating things to the next step can be costly. Getting your application granted after denial can take a lot of extra work, and you’d better be sure you’ve got a strong case with all the costs that can enter into an appeal.
The median cost of an administrative challenge is $150,000 for patents in the computer or electrical fields. Facing a few rejections may be another day at the office for an entrepreneur, but the costs can build if you’re not thorough in your approach.
The process can be long and intricate, so understanding how it works is vital. You’ll need to start with a Notice of Appeal, followed shortly by a briefing of the issues you’re facing. This is where you set down your argument for why your patent should make it through. A team of examiners will then determine whether to remove the rejection verdict or to pass you along.
If you’re set to go ahead to the Patent Trial and Appeal Board (PTAB), you’ll have the option to answer any points brought by the team of examiners. You can also opt for an oral hearing before the PTAB at this time. There’s often a fee associated with each step, so it’s important to prepare your strategy accordingly.
The PTAB will take a look at your submissions before they render a decision. They will likely present you with one of three answers:
- Affirmed upholds the examiner’s position
- Affirmed-in-part reverses some but not all of the claims
- Reversed passes the buck back to the examiner
A reversal means that the examiner will have to support remaining claims of unpatentability by entering a new rejection.
Each step comes with costs, with windows to hit or extensions to pay for. There are a number of stops along the way where you can succeed, but also plenty of opportunities for missteps, unnecessary expenses and rejections. Make sure you’re ready to meet standards from the start, and you could find more prosperity in navigating the process.