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Following A Patent Rejection

By Franklin Thomas

There are actually several reasons for patent denial and in a number of scenarios it’s a simple issue of requiring additional documentation or a improved explanation of your work. Nevertheless, there may be additional complex issues causing your patent rejection that require the help of a patent attorney.

When facing a patent denial after properly filing your application, you have the right to appeal the determination. Filing an appeal requires an official form from the U.S. Patent and Trademark Office along with the appeal fee. A written brief is also required, describing your position against the denial.

Once filed, your patent denial and appeal go before the Board of Patent Appeals and Interferences (BPAI). If needed, an oral hearing may be held at the board’s recommendation. A patent legal professional can help you with the drafting of your written brief and oral hearing.

The BPAI is composed of:

* The Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office; * The Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO; * The Commissioner for Patents; and * The administrative patent judges.

A typical appeal will be heard by only 3 of these members. The BPAI is responsible for looking at patent appeals filed in response to patent denial and reviewing interferences to determine priority in the claim of an inventor trying to patent an invention previously claimed by someone else. While the majority of patent appeals can be settled at this phase, another denial at this stage means the inventor ought to take their patent appeals to the Court of Appeals for the Federal Court.

If your first patent appeals do not return ideal results, you may file a civil action against the Director in the United States District Court for the District of Columbia. This is an action best taken with the support of a patent law firm, as there are serious legal actions to deal with at this stage. The Court will review the records from the BPAI and determine to either reverse or uphold the BPAI’s decision.

An alternative solution to patent appeals is filing a continuation application. This is basically a new application that requires a separate filing fee, but focuses on the parts of the original application that require additional examination. The new application should focus on the claims and evidence for which further consideration was desired in the patent rejection notice.

Obtaining proper guidance during the conclusion of your patent denial is essential to preserving you time and money. You may possibly want support in determining whether patent appeals or a continuation application is proper to resolve your patent denial. Or you may need support with parts of the appeals process, which can involve court hearings and testimony.

If your patent has been rejected, talk to a local San Diego patent attorney about what options are best for you. Talking to a San Diego patent attorney following your patent rejection is your best bet to acquiring a favorable outcome.

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Article Citation
MLA Style Citation:
Thomas, Franklin "Following A Patent Rejection." Following A Patent Rejection. 3 Jul. 2010. 24 Aug 2014 <>.

APA Style Citation:
Thomas, F (2010, July 3). Following A Patent Rejection. Retrieved August 24, 2014, from

Chicago Style Citation:
Thomas, Franklin "Following A Patent Rejection"

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