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[henry]

How do you decide whether to file a notice of appeal or a continuation?

[TataBox]

1.The cost of an appeal is less than a continuation application, http://www.uspto.gov/web/offices/ac/qs/ope/fee2006mar01.htm

2. If you think that there is additional evidence or different claims that should be considered in your application, then filing a continuation is the best route.   Under 1207 in the MPEP, entering new evidence that raises new issues will not be entered as a matter of right.

This is off the top of my head.   I am sure others here will provide you with more information.

[Jonathan]

Generally, a Notice of Appeal is filed when an applicant believes that an Examiner's rejections are improper but the Examiner does not find that the applicant's patentability arguments are persuasive. In this situation, a continuation application will likely be routed to the same examiner. If that continuation contains the same twice-rejected claims (one requirement to file an appeal), the Examiner is free to make a 1st office action final for that continuation application. Therefore, filing a Notice of Appeal can be a more cost effective strategy for the above-described situation.

Notice of Appeals are also sometimes filed, after a final rejection, merely as a somewhat cheaper method of keeping an application alive after a 3 month period of response has expired and an applicant does not know if they want to continue with the application. Filing a continuation with out fees would be cheaper than the appeal fee. However, that continuation application goes to the bottom of the examination queue. Another option for keeping the original application alive, after a final rejection, is to pay the extension fees while the applicant decides how to proceed. If action to keep the application alive is not completed until the 3rd month of extensions, the total fee amount will inherently be more expensive as compared to filing a Notice of Appeal within the original 3-month period of response.

Skimming the reasons to file a continuation with a very large brushstroke, theyare generally filed to pursue additional claims that were not included in the parent application.

[Jonathan]

1.The cost of an appeal is less than a continuation application.

The Notice of Appeal fee is indeed cheaper than an application filing fee. However, the preparation of the actual Appeal Brief can be very expensive - several thousands of dollars, perhaps. That cost is probably going down, though, due to growing use of the pre-appeal brief conference. Re-stated, if a favorable outcome is arrived via the conference, preparation of the appeal brief can be avoided.

[henry]

Does the Examiner have to contact you after you file a Notice of Appeal?

[greg10]

What is the pre-appeal brief conference?  

[JimIvey]

You file remarks for a preappeal conference and the examiner and two others (presumably specially trained for this sort of thing) discuss the case and get back to you before your appeal brief is due.

My understanding is that more than half of the conferences result in something other than pressing forward with the appeal -- some sort of re-opening of the prosecution on the merits.  Perhaps a new (hopefully non-final) grounds for rejection.  Perhaps allowance.  

The flip-side is that nearly half just go forward with appeal.

The problem addressed by the process is that well over half of all appeals were resulting in remanding the case to the examiner for further examination -- either new grounds for rejection or a reversal.  The back log in the board of appeals was huge and the appeals board was effectively doing basic examination of applications for the examiners (or at least they felt that way).

I looked around for the link and couldn't find it.  The rules for that were published in the Federal Register, I think.

Regards.

[henry]

  Thanks, everyone!

[datuk]

I have just recieved an examiner's reply after my appeal brief but there is no clear instructions what I have to do after this. Do I send in a reply to the examiner's reply ? and within 1 month ?

Thanks

[JimIvey]

A Reply Brief can be filed within 2 months of the Examiner's Answer, but is not required.  No extensions of time are available.

Regards.

[gregm170]

I have just recieved an examiner's reply after my appeal brief but there is no clear instructions what I have to do after this. Do I send in a reply to the examiner's reply ? and within 1 month ?

Thanks

How much time does the Examiner have to reply?  I filed an appeal brief in June or so, but it was just assigned to another examiner.   

Thanks in advance.

Greg. 

[mk1023]

I have just recieved an examiner's reply after my appeal brief but there is no clear instructions what I have to do after this. Do I send in a reply to the examiner's reply ? and within 1 month ?

Thanks

How much time does the Examiner have to reply?  I filed an appeal brief in June or so, but it was just assigned to another examiner.   

Thanks in advance.

Greg. 

Examiners dockets have three main categories: Regular New (new cases), Regular Amended (cases with responses), Rejected (cases awaiting a response). The PTO support staff must process every response before it can be moved from rejected to regular amended. The length of time it takes for the support staff to forward the amendment to regular amended takes between a few weeks and a few months. I have one case where a response was filed 3+ months ago, but still has not been forwarded to my Amended tab.

Once the case shows up in the Regular Amended tab, the examiner has two months to work on it before they get negative workflow points.

There is no guarantee that your appeal brief has actually been forwarded to the examiner. I have one appeal brief in my Rejected tab that was moved there from an examiner that quit. It was received by the office 2 months ago.