(Updated September 2025 for clarity and accuracy.)
For many inventors and companies, securing a patent is a critical step in protecting their innovation. But the journey to an approved patent can be challenging. Rejections from patent examiners are common, and while many can be resolved through amendments or arguments, sometimes agreement simply can’t be reached. When that happens, applicants have the right to appeal the decision to the Patent Trial and Appeal Board (PTAB).
Why Patents Get Rejected
Before deciding whether to appeal, you need to understand why the examiner rejected your application. According to the USPTO, the examiner must explain the basis for the decision. In some cases, the examiner is applying the rules correctly. In others, the interpretation may be overly strict or simply wrong.
Common reasons for rejection include:
Obviousness
Lack of novelty
Lack of patentability
If the examiner believes a prior reference contains all the elements of your idea, they may consider your invention obvious. Novelty issues arise when the examiner points to something already known or publicly available. A lack of patentability finding can occur when the subject matter isn’t eligible for patent protection at all, such as if the claim is directed to an abstract idea, a natural phenomenon, or a purely mathematical formula.
Grounds for Appeal
Determinations by the Examiner can be subjective and open to challenge. You have grounds to appeal if the examiner misinterpreted the law or the prior art, or if you believe they overlooked key arguments. You can also appeal if the application was rejected because of an error in how it was originally prepared. In all of these situations, having a patent attorney guide your appeal can make a significant difference.
How the Appeals Process Works
The 2011 America Invents Act changed how patent appeals work. Applicants now have direct access to the Patent Trial and Appeal Board (PTAB), which replaced the former Board of Patent Appeals and Interferences.
Before reaching the PTAB, there are several steps:
File a notice of appeal and pay the required fee.
This officially sends your case to the PTAB and preserves your right to challenge the examiner’s decision.Prepare and submit an appeal brief.
Under 37 CFR 41.37, the brief must identify the real party in interest, list any related cases, and explain why the examiner’s rejection is incorrect. This is the core of your appeal and often the most time-intensive part.Wait for the examiner’s answer.
The examiner may stand by the original rejection, add new grounds for rejection, or withdraw certain arguments entirely.Submit a reply brief (if needed).
If the examiner raises new issues, you can address them here. This step is optional but often strategically useful.Request an oral hearing (optional).
Hearings can be held in person, by video, or by phone. If the PTAB rules against you, the decision can be appealed to the federal courts.
Because the appeals process is highly procedural and the rules are strict, an experienced patent attorney can help you avoid missteps, especially when preparing the appeal brief and framing arguments under the PTAB’s standards.
Calling in the Experts
Patent appeals combine legal analysis with technical understanding, and the process involves making your case to legally trained judges. Larson & Larson has handled appeals for many years and understands how to position an invention for the best chance of success. If you’re considering an appeal or want to understand your options, contact us.[/vc_column_text][/vc_column][/vc_row]
Published by Larson & Larson, a Florida-based intellectual property law firm serving clients since 1987.
