The response of an applicant to an action by the Office must be made
within a prescribed time limit. The maximum period for response is set
at 6 months by the statute which also provides that the Commissioner may
shorten the time for reply to not less than 30 days. The usual period
for response to an Office action is 3 months. A shortened time for reply
may be extended up to the maximum 6–month period. An extension of time
fee is normally required to be paid if the response period is extended.
The amount of the fee is dependent upon the length of the extension. If
no reply is received within the time period, the application is
considered as abandoned and no longer pending. However, if it can be
shown that the failure to prosecute was unavoidable or unintentional,
the application may be revived by the Commissioner. The revival requires
a petition to the Commissioner, and a fee for the petition, which should
be filed without delay. The proper response must also accompany the
petition if it has not yet been filed.
Appeal to the Board of Patent Appeals and Interferences and to the
Courts
If the examiner persists in the rejection of any of the claims in an
application, or if the rejection has been made final, the applicant may
appeal to the Board of Patent Appeals and Interferences in the Patent
and Trademark Office. The Board of Patent Appeals and Interferences
consists of the Commissioner of Patents and Trademarks, the Deputy
Commissioner, the Assistant Commissioners, and the administrative patent
judges, but normally each appeal is heard by only three members. An
appeal fee is required and the applicant must file a brief to support
his/her position. An oral hearing will be held if requested upon payment
of the specified fee.
As an alternative to appeal, in situations where an applicant desires
consideration of different claims or further evidence, a new
continuation application is often filed. The new application requires a
filing fee and should submit the claims and evidence for which
consideration is desired. If it is filed before expiration of the period
for appeal and specific reference is made therein to the earlier
application, applicant will be entitled to the earlier filing date for
subject matter common to both applications.
If the decision of the Board of Patent Appeals and Interferences is
still adverse to the applicant, an appeal may be taken to the Court of
Appeals for the Federal Circuit or a civil action may be filed against
the Commissioner in the United States District Court for the District of
Columbia. The Court of Appeals for the Federal Circuit will review the
record made in the Office and may affirm or reverse the Office’s action.
In a civil action, the applicant may present testimony in the court, and
the court will make a decision.