Patent Appeals

An Explanation of the USPTO Patent Appeal Process

When a patent application faces repeated rejections at the United States Patent and Trademark Office (USPTO), the applicant has the right to appeal those decisions through the USPTO's patent appeals process. This process allows a dissatisfied patent applicant to seek review by an impartial appeal board: the Patent Trial and Appeal Board (PTAB). The appeal process can be critical for business owners and inventors seeking to secure patent rights when an examiner's rejections are in error or have questionable bases. This article provides an accessible explanation of the USPTO patent appeal process, addressing the major steps and requirements of an appeal. We focus on ex parte patent appeals (appeals of patent application rejections), rather than other PTAB proceedings like inter partes reviews or derivation proceedings, which involve third parties.

When Can You Appeal a Patent Application Decision?

Under U.S. law, a patent applicant can appeal an examiner’s decision after the claims have been twice rejected. This “twice rejected” rule means that if any claim in the patent application has been rejected at least twice (e.g., in a first rejection and again in a final rejection), the applicant may appeal the rejection of the claim to the PTAB. It is not required that the rejections be final; even two non-final rejections suffice, as long as the applicant has been “twice denied a patent”, as provided in 35 U.S.C. § 134(a). Most commonly, appeals follow a Final Office Action, after which further prosecution with the examiner would require a formal request for continued examination and the payment of substantial UPSTO fees. The twice-rejected rule applies to both patent applicants and patent owners in reexamination proceedings.

Before deciding to appeal, an applicant might also consider alternatives like amending claims or filing a Request for Continued Examination to continue prosecution before the examiner. However, if prosecution has reached a final rejection and further arguments or amendments seem unlikely to persuade the examiner, an appeal can provide a fresh review of the legal issues and patentability arguments by a panel of experienced administrative patent judges.

The Patent Trial and Appeal Board (PTAB)

The Patent Trial and Appeal Board is the appeal board within the USPTO that handles patent appeals. The PTAB is composed of administrative patent judges (APJs). Under 35 U.S.C. § 6, the Board acts as a quasi-judicial body to review adverse decisions of examiners on patent applications, as well as to conduct other proceedings, including inter partes reviews and post-grant review trials. For ex parte patent appeals, the PTAB panel includes three judges who will read the briefs, optionally hear oral arguments, and issue a written decision on the appeal. The Board’s decision may affirm or overturn the examiner’s rejections, in whole or in part. The PTAB operates under its own set of procedural rules (37 C.F.R. §§ 41.30–41.54). Notably, the Board is not a trial court. There is no jury, and no live witness testimony in ex parte appeals. Also, a patent appeal is ex parte, involving only the applicant (appellant) and the USPTO. There are no adverse third parties as in patent appeals before the PTAB. Rather than a trial, the appeal process is more like an appellate review of the examiner’s work based on the record of the patent application, including the prior art references, office actions, arguments, evidence submitted, and any other relevant matters in the application record. The Board gives fresh consideration to the issues, but applies the same broad standard used during examination: the claims are given their broadest reasonable interpretation. For the patent applicant, the PTAB is essentially an opportunity to have experienced patent law judges take a second look at whether the examiner erred in rejecting the claims. This can be especially valuable if the examiner’s rejections involve complex issues of law or claim construction that the applicant feels were not properly recognized or understood during prosecution. The PTAB’s role as an appeal board ensures that patentability decisions are not solely left in the hands of a single examiner but can be reviewed and corrected if mistaken.

Initiating an Appeal: Filing the Notice of Appeal

The first formal step in the appeal process is filing a notice of appeal with the USPTO. The notice is a form document (form PTO/SB/31) that notifies the Office that you intend to appeal the examiner’s decision. It must be filed within the time allowed to respond to the last Office action: within 3 months after a final rejection, extendable up to 6 months with payment of extension fees. In practice, applicants often file the notice of appeal toward the end of the response period for a final rejection if they cannot overcome the rejection through an after-final response or pre-appeal brief request (discussed below). A USPTO fee is required for the notice of appeal. Once the notice is filed, the applicant is formally “appealing” and is henceforth referred to as the appellant. It’s important to note that filing a notice of appeal by itself does not immediately transfer the case to the Board; it merely secures your right to pursue the appeal. The appellant must follow up by filing an Appeal Brief within two months of the submission of the notice of appeal. If the appellant ultimately decides not to pursue the appeal, they can withdraw it or let it lapse, but failure to follow through will result in abandonment of the application once deadlines pass.

Pre-Appeal Brief Request (Optional)

When filing the notice of appeal, the appellant has an option to also file a pre-appeal brief request for review. This triggers a quick review of the case by a panel of examiners, including the examiner and supervisors before a full appeal brief is filed. The pre-appeal conference panel will look for clear errors in the rejection. If they find a blatant error, such as a misinterpretation of prior art dates or a rejection that clearly overlooks a key claim limitation, they can reopen prosecution or allow the application without the need for a full appeal. If they do not find such an error, the applicant must then proceed with the full appeal. The pre-appeal process is a way to potentially avoid a long appeal by catching egregious mistakes early. Statistics presented by the USPTO indicate that a significant portion of appeals never proceed to a full brief because of resolutions at the pre-appeal or conference stage. Thus, for business owners, using the pre-appeal review can be a cost-effective tactic when the rejection seems clearly wrong on its face.

The Appeal Brief

The appeal brief is a formal written brief in which the appellant (patent applicant) presents their arguments as to why the examiner’s rejections are incorrect. The USPTO rules (37 C.F.R. § 41.37) lay out the required format and contents of the brief, including sections such as a summary of the claimed subject matter, the grounds of rejection to be reviewed, an argument for each issue, and any evidence appendix. The brief must be filed within two months of the Notice of Appeal, but the due date is extendable with fees up to an additional five months. Notably, since 2013 the USPTO does not charge a fee for filing the appeal brief itself. In the Appeal Brief, the appellant should clearly explain each rejection, e.g., anticipation under 35 U.S.C. § 102, obviousness under 35 U.S.C. § 103, lack of patentable subject matter under § 101, etc., and then argue, using legal reasoning and evidence, why the rejection is not justified. This often involves discussing prior art in detail, pointing out distinctions between the claimed invention and the cited references, addressing the examiner’s arguments, and citing legal authorities (such as past Board decisions or court cases) that support the applicant’s position. For example, if the rejection is for obviousness, the brief might argue that the examiner failed to show a motivation to combine the references, citing Federal Circuit case law on obviousness standards.

The tone of an appeal brief should be professional and persuasive, focusing on facts and law. New evidence is generally not allowed in an appeal brief. The record on appeal is limited to what was already submitted during prosecution, and so the emphasis is on legal argumentation. It’s crucial that the brief address every ground of rejection for each appealed claim. Any issue not argued is waived. In fact, the Federal Circuit has cautioned that failing to contest a rejection in the brief means that rejection can be deemed conceded and such waiver may create problems in the review or later appeal before the Federal Circuit. Thus, completeness is critical. The brief is also an opportunity to clarify the construction or meaning of the claims, explaining what the claims cover and how the examiner may have misinterpreted them. A thorough and well-reasoned appeal brief provides the appellant the best chance of success on appeal.

Examiner’s Answer and Applicant’s Reply Brief

After the appeal brief is filed, the ball is in the examiner’s court. The examiner must respond with either an examiner’s answer or another action. In many cases, the examiner will write an examiner’s answer to the appeal brief, usually within a few months. The examiner’s answer is effectively the examiner’s rebuttal. It will address the arguments raised in the appeal brief and may further explain the rationale for the rejections. The answer can also include new evidence or a new rationale, but if it raises a new ground of rejection, the rules require the examiner to explicitly label it as such. See 37 CFR § 41.39. New grounds are not common in answers, but it can happen. The examiner has two other options at this stage in lieu of an answer: (1) reopen prosecution or (2) allow the application.

Reopening prosecution means the examiner has decided that, in view of the arguments in the brief, the prior rejection should be withdrawn and a new search or new rejection is warranted. This requires approval from a supervisor and is often done if the brief exposed a flaw in the original rejection that can be fixed by altering the rejection. While reopening prosecution can be frustrating for an appellant, since it delays the appeal and forces them to address new rejections, it can sometimes lead to eventual allowance if the issues are resolved.

Alternatively, the examiner might decide the appellant’s arguments are persuasive and withdraw the rejection, thus allowing the application. In such a case, a formal examiner’s answer isn’t issued. Instead, the applicant would receive a notice of allowance.

Assuming the examiner does maintain the rejections and issues an answer, the appellant then has the opportunity to file a reply brief. The reply brief must be filed within two months from the Examiner’s Answer, but the due date is extendable by up to five additional months and should address any new points raised in the answer. The reply is the appellant’s last written word on the matter. It should be concise and directly responsive to the examiner’s answer, correcting any misstatements and reinforcing the strongest arguments. However, the reply brief cannot introduce new arguments that are not responsive to the examiner’s answer or new evidence, as doing so could be seen as raising new issues outside the scope of the appeal. If the examiner’s answer contained an unexpected new rationale, even if not labeled as a new rejection, the appellant can use the reply to argue against it. Per 37 CFR 41.39, the applicant's reply brief may include arguments addressing new points in the examiner’s answer. Once the reply brief is filed or the time for filing it expires, the briefing stage of the appeal is complete. At this point, jurisdiction over the case typically passes to the PTAB, meaning the appeal is formally docketed for a Board decision.

Optional Oral Hearing

In ex parte patent appeals, the appellant has the right to request an oral hearing (oral argument) before the PTAB, although in practice many appeals are decided on the written briefs alone. An oral hearing must be specifically requested, usually by filing a request within two months of the examiner's answer. 37 C.F.R. § 41.47. If an oral hearing is requested, the case will be scheduled for an argument session and the appellant will have the opportunity to present their arguments in person or via teleconference to the panel of administrative patent judges. At the USPTO, an oral hearing is much like an appellate court argument: it is limited to 20 minutes per side. The USPTO gives the appellant 20 minutes, and the examiner will typically not argue, but the Office can have a patent attorney represent the examiner’s position. During the oral hearing, the appellant highlights key points from the briefs and answers questions from the judges. It’s an opportunity to clarify complex technology or legal points and to address any concerns the judges express. However, new evidence cannot be introduced, and any argument made must be within the scope of issues already raised in the briefs.

If an appellant requests an oral hearing and later decides it’s unnecessary, they can withdraw the request to have the case decided on briefs. Keep in mind that requesting a hearing can add some delay, although the PTAB tries to schedule them efficiently. Whether to request oral argument often depends on the case. If the appeal involves complicated facts or needs clarification beyond the written word, a hearing can be helpful. On the other hand, if the issues are straightforward (e.g., a single prior art reference dispute), oral argument may not significantly change the outcome and could simply prolong resolution. Business owners should discuss with their counsel whether an oral hearing is worth the additional effort and cost in their specific case. Importantly, if no hearing is requested, the Board will decide the appeal based on the briefs and the written record alone, which is a common practice.

The PTAB’s Decision

After the briefing is complete and any oral hearing has taken place (or been waived), the panel of PTAB judges will confer and issue a written Board decision. This decision typically comes in the form of a reasoned opinion that addresses each ground of rejection on appeal. The timing for receiving a decision can vary. In recent years, the average pendency from when the Board receives the case (appeal forwarding fee paid) to a decision has been around 12 months on the regular track. In the Board’s decision, there are several possible outcomes for each rejection:

• Affirmance – The Board agrees with the examiner and affirms the rejection of the claims (upholding the examiner’s decision).
• Reversal – The Board disagrees with the examiner and reverses the rejection, which means the examiner’s rejection is withdrawn. A full reversal of all rejections effectively means the appellant has won and the application is set to proceed to allowance, barring other issues.
• Partial Affirmance/Partial Reversal – The Board might affirm some rejections and reverse others, e.g., some claims or some grounds are affirmed, others are reversed. This mixed outcome is common if multiple claims and issues are on appeal.
• Remand – In some cases, the Board may remand the case back to the examiner for further action without a final decision on the merits. A remand could occur if a procedural issue needs correction or if the Board identifies an issue that the examiner should consider (for example, new prior art that surfaced). Under current rules, remands in ex parte appeals are relatively rare, as the Board generally tries to resolve the issues or issue a new rejection rather than remand.
• New Ground of Rejection – The Board also has authority to enter a new ground of rejection in its decision per 37 C.F.R. § 41.50(b), if the judges believe the claims should be rejected on a basis not considered by the examiner. If this happens, the appellant is not stuck, they are given two options:
  1. Reopen prosecution before the examiner to address the new ground (e.g., by amendment or argument), or
  2. Request a rehearing before the Board to argue against the new rejection, effectively giving the Board a chance to reconsider the new ground. The appellant cannot both reopen and seek rehearing; they must choose one path to respond to the Board’s new rejection.

The Board’s written decision will include reasoning. For example, if the issue was obviousness, the decision will discuss the evidence and arguments regarding why the invention is or is not obvious in view of the prior art. The decision is mailed to the appellant and also published on the USPTO’s electronic docket. Overall USPTO data show that roughly 40% of ex parte appeals ultimately result in an outcome favorable to the applicant (reversal, allowance, or at least something other than a straight affirmance of the rejection). This suggests that appealing can be worthwhile. Of course, every case is unique, and these percentages can vary by technology area.

If the Board’s decision is a full reversal, the application returns to the examiner with instructions to allow the appealed claims. A reversal directed at all issues means the examiner cannot continue rejecting those claims on the same grounds. If the Board affirms the rejections, then the application remains rejected. If the Board’s decision is a mix of affirmed and reversed, the allowed claims will move forward (potentially issuing in a patent), while the rejected claims remain denied unless the applicant takes further action. An appellant who is dissatisfied with the Board’s final decision has further options, which we discuss next.

After the Decision: Request for Rehearing at the Board

Upon receiving an adverse Board decision, the appellant’s first option is to stay within the USPTO by filing a request for rehearing with the PTAB. A request for rehearing must be filed within two months of the Board’s decision. This deadline is not extendable as a matter of right. In a rehearing request, the appellant must state with particularity the points the Board misapprehended or overlooked in its decision, as required under 37 C.F.R. § 41.52. Essentially, you are telling the same panel of judges that they made a mistake, e.g., that they misunderstood a key argument or overlooked important evidence. New arguments or evidence are generally not allowed. The request must be based on the existing record and issues already raised. Rehearings are granted infrequently. The Board will rarely change its decision unless a clear error is shown. However, sometimes a rehearing can succeed if, for example, a recent Federal Circuit or Supreme Court decision came out that impacts the case, or if the Board’s decision contained a factual mistake. The Board on rehearing can affirm its original decision, modify it, or even reverse itself. If the rehearing is denied or doesn’t fully resolve the issues in the appellant’s favor, the USPTO appeal process is concluded.

At that point, the administrative remedies within the USPTO are exhausted. The next step would be to seek judicial review in the courts, if desired. It should be noted that if the Board introduced a new rejection and the appellant chose to reopen prosecution instead of rehearing, the case goes back to the examiner and essentially the application is examined again on that new ground. The applicant can then potentially appeal again if the new rejection isn’t overcome. This sequence can prolong prosecution significantly.

Appealing to the Federal Circuit

Once the PTAB has issued a final decision on the appeal and any rehearing request is resolved, the applicant has the right to further appeal the decision to the judicial system. The most common route is an appeal to the U.S. Court of Appeals for the Federal Circuit. The Federal Circuit is a specialized appellate court in Washington, D.C. that hears all patent appeals from the USPTO (as well as patent infringement appeals from district courts). An appeal to the Federal Circuit must be filed within a strict time frame, currently 63 days from the PTAB decision. Notably, by choosing to appeal to the Federal Circuit, the applicant waives the alternative option of pursuing a civil action in district court. You must choose one path or the other, not both.

In a Federal Circuit appeal, no new evidence can be introduced. The court’s review is confined to the record that was before the USPTO. The issues on appeal typically revolve around whether the Board’s decision was correct as a matter of law and supported by substantial evidence. The appellant will file briefs in the court and there will likely be an oral argument before a panel of three Federal Circuit judges. The USPTO is represented by attorneys from the Office of the Solicitor who will defend the Board’s decision. The Federal Circuit gives deference to the PTO on factual findings and the court reviews the PTO’s factual determinations under the "substantial evidence" standard, rather than de novo. Dickinson v. Zurko, 527 U.S. 150 (1999). This means the court will uphold the Board’s factual findings if a reasonable mind might accept the evidence as adequate, even if the court might have reached a different conclusion on its own.

However, on questions of law like interpretation of statutes or claim construction if purely legal, though claim interpretation in PTO appeals is often treated as factual because of the usage of broadest reasonable interpretation, the Federal Circuit reviews without deference under a de novo standard. For example, whether the Board applied the correct legal test for obviousness is reviewed de novo, but whether a particular reference teaches a claim element is factual and is evaluated under the substantial evidence standard. If the Federal Circuit finds error, it can reverse the PTO’s decision or remand the case back to the PTO for further proceedings. If it agrees with the PTO, it will affirm. Keep in mind that Federal Circuit decisions can themselves be appealed to the U.S. Supreme Court. However, the Supreme Court accepts patent cases only on rare occasions. For context, the Supreme Court has weighed in on aspects of the patent appeal process in cases like Zurko and Kappos v. Hyatt (discussed below- dealing with evidence in civil actions against the USPTO), but it does not serve as a routine second appellate layer for most patent applicants.

Civil Action in District Court

In addition to (or instead of) appealing directly to the Federal Circuit, U.S. patent law provides an alternative civil action route for dissatisfied applicants. Under 35 U.S.C. § 145, an applicant can file a civil action to obtain a patent against the Director of the USPTO in the U.S. District Court for the Eastern District of Virginia, which is the federal trial court with jurisdiction over these cases. This option must be exercised within a time set by statute (63 days from the Board decision, similar to the Fed Circuit timeline). A key feature of the §145 civil action is that it is not limited to the existing record. It is essentially a fresh lawsuit where the applicant (now plaintiff) can present new evidence that was not submitted to the PTO. The court case proceeds like a normal civil litigation: there can be discovery, expert witnesses, summary judgment motions, and ultimately a trial (often a bench trial before a judge).

However, there are important considerations. First, pursuing a district court action is typically far more expensive than a Federal Circuit appeal. It is a full-blown litigation against the government. In fact, the statute requires that “[a]ll the expenses of the proceedings shall be paid by the applicant”, win or lose. This was interpreted to even include the USPTO’s attorney fees until the Supreme Court in NantKwest, Inc. v. Iancu, 140 S. Ct. 365 (2019) ruled that the American Rule against fee shifting prevented the PTO from recovering attorney fees as “expenses”. Still, the applicant will bear court costs and other expenses. Second, a §145 action is time-consuming; it can take years if it goes to trial.

The district court route is usually chosen only in unusual cases. For instance, where the applicant strongly feels that additional evidence will make a decisive difference or where there was some procedural issue at the PTO that a court might view more favorably. The district court will consider the new evidence alongside the PTO record and make its own findings of fact de novo if new evidence is introduced. This can be advantageous if the applicant has additional evidence (e.g. experimental data to rebut an obviousness rejection, or an expert affidavit on claim interpretation) that could not have been obtained earlier. The Supreme Court in Kappos v. Hyatt confirmed that there is essentially no special limit on new evidence in §145 actions beyond the usual rules of evidence. Kappos v. Hyatt, 566 U.S. 431 (2012). The applicant is free to introduce new testimonial or documentary evidence, and the district court will then make its own factual determinations without deference to the PTO on those new points. In Hyatt , the applicant introduced a new declaration in district court to bolster his position after the Board partially rejected his claims. The district court initially refused to consider the new evidence and granted summary judgment against the applicant, but the Federal Circuit and Supreme Court held that the new evidence must be considered and evaluated de novo.

In general, by choosing the district court path, the applicant is foregoing the quicker appellate review in favor of a do-over with the opportunity to strengthen the evidentiary record. If the district court ultimately rules that the applicant “is entitled to receive a patent”, it can authorize the USPTO to issue the patent. If it rules against the applicant, that judgment can be appealed to the Federal Circuit, but now with a full trial record. Given the cost, this option is seldom used except in high-value cases or where an applicant had difficulty getting evidence in front of the PTO. For most business owners, a direct Federal Circuit appeal is the more practical route if the Board appeal fails, but it is good to know that the civil action option exists as a backstop.

Issues and Strategies in Patent Appeals

Appealing a patent rejection requires careful strategy and understanding of the legal issues. Typically, the grounds of rejection on appeal might include: novelty (35 U.S.C. 102), obviousness (35 U.S.C. 103), patent-eligibility (35 U.S.C. 101), or adequacy of disclosure (35 U.S.C. 112 written description), among others. Each type of rejection brings its own nuances. For example, an anticipation appeal will often boil down to whether the examiner correctly interpreted the prior art reference and the patent claim, whereas an obviousness appeal might involve arguments about whether the examiner provided a proper rationale for combining references and whether the combination would have had a reasonable expectation of success. On appeal, claim construction (how the claim language is interpreted) can be a pivotal issue. Appellants often argue that the examiner or Board interpreted a term too broadly or in a way inconsistent with the specification. Evidence like expert opinions or technical dictionaries, if they were made part of the record, can be brought to bear on these points. Another common issue is secondary considerations: objective indicia of non-obviousness such as commercial success or long-felt need. If an applicant presented such evidence during prosecution and the examiner dismissed it, the Board will consider on appeal whether that evidence was given proper weight. Throughout the appeal, the burden is technically on the USPTO to justify its rejections, but as a practical matter the appellant must convincingly show the rejection is in error.

It is also important to manage procedural issues. Some matters are not appealable but rather are petitionable. For instance, if the applicant believes the examiner made a procedural error, like introducing a new ground of rejection in a final action without designation, that issue may need to be addressed by petition to the USPTO under separate procedures, rather than by the Board on appeal. The appellant should ensure that the appeal brief sticks to the substantive merits of the rejections. If there were minor issues, like the examiner not considering an amendment or evidence, often those should be resolved before appealing because the Board typically will not decide those kinds of procedural disputes on the merits.

Patent Appeals vs. Other PTAB Proceedings

It’s worth briefly distinguishing ex parte patent appeals from other proceedings before the Patent Trial and Appeal Board to avoid confusion. The PTAB, as its name suggests, handles not only appeals from examiners, but also trial proceedings like Inter Partes Review (IPR), Post-Grant Review (PGR), and Derivation proceedings. These are adversarial proceedings usually initiated by a third party, such as a competitor challenging an issued patent’s validity, or a dispute where one party alleges another derived an invention from them. While these also involve panels of PTAB judges and have some superficial similarities, their processes and legal standards differ significantly from ex parte appeals of patent applications. For instance, inter partes reviews are more like mini-trials with an opposing party, limited discovery, and are typically rendered on issued patents, focusing mainly on prior art patents and printed publications. Derivation proceedings involve evidence to determine who was the true inventor when two patent filings claim the same invention, essentially involving two parties/two patent filings in dispute.

In contrast, an ex parte appeal involves only the patent applicant and the USPTO, and is about whether the examiner properly rejected the claims. The jurisdiction for decision-making in ex parte appeals lies first within the USPTO (the PTAB), with judicial review by the Federal Circuit or district court as described. Other PTAB trials also go to the Federal Circuit on appeal, but they cannot go to district court. By statute, IPR and PGR appeals may go only to the Federal Circuit.

Conclusion

A patent appeal is one of many patent prosecution tools that can be utilized in pursuing the issuance of a patent, but it is not always the right tool. You need the assistance of an experienced patent attorney to determine whether an appeal or another procedure is the right strategic step. If you need assistance with a patent appeal or other patent matter, contact our office for a free consultation.

© 2025 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.