Generally speaking, Applicants do not appeal rejections as much as I would hope. With the assistance of Yamauchi Shin-san of Yamauchi Patent Attorneys (https://www.yamauchi-pat.com), I wrote about the strategic value of appeal during the Covid-19 situation. This article will be published in the November issue of the Japan Patent Attorney Association’s “Patent” magazine. However, this blog post will focus on when a case feels “ripe” for appeal.
Of course, this decision is very highly fact-specific. The facts of the invention and rejection itself are major factors, naturally. Can the rejection be overcome by simply amending the claims? Does the specification support further amendments? Would narrower claims still satisfy the business needs of the applicant?
I also consider the nature of the applicant. Some applicants aggressively approach appeal. These applicants believe appeal is as effective for their business goals as filing further amendments along with Requests for Continued Examination (RCEs). Other applicants have a limited budget and only consider appeals in which they believe the Patent Trial and Appeal Board (PTAB) is much more likely to reverse the Examiner than in the typical case. Still other applicants are concerned about the delay caused by an appeal, because they prefer receiving a narrow patent sooner rather than a broader patent later.
The behavior of the Examiner should also be considered. Some Examiners will only allow a patent application, if the Applicant successfully appeals. Other Examiners simply reopen prosecution with a slightly different rejection after each Appeal Brief, making it difficult to obtain the resolution of an appeal.