Appeals

Another strategy for dealing with Examiners in light of their incentives is to appeal rather liberally. Appeals, although becoming more common, are still extremely rare. A lawyer I know at a big firm commented that his firm almost never appeals for fear that an application would be rejected by the Board, preferring to file RCEs and continuation applications as necessary. This leads to some boldness in the Examining corps, in my opinion.

Filing an appeal has several positive effects. First, it tells the Examiner that you are not going to file RCEs over and over again no matter what he or she does. An appeal signals that the RCE gravy train is about to come to an end. They now know that the case is not going to get disposed unless it is allowed or it is seen by the Board, where the Examiner could potentially be embarassed and reversed.

Second, Examiners do not like appeals. They do not like holding an appeal conference with their supervisor and, worse, a third party, who review the Examiner’s work closely. They do not like writing Examiner’s Answers. They do not like being forced after an appeal conference to reopen prosecution and change their rejection without getting a count for it. And they do not like being reversed by the Board.

Examiners do not expect to be appealed and are often suprised when it happens. It puts them in another frame of mind, often a frame of mind in which they take the case more seriously and really think about whether there might be something in the application they could allow.

For those reasons, whenever an Examiner is uncooperative and is making what appears to be a clear error, I appeal.

Clifford D. Hyra

* RCE (request for continuing examination)