Appealing and Abandoning

If your patent application is rejected, you can always appeal it. This only happens when the patent examiner and the applicant cannot come to an agreement about the patentability of the application. Otherwise, the applicant can amend or abandon the application.

If you do appeal, you must prove that the application was wrongly rejected. This can be accomplished by proving that the patent office incorrectly applied the law, misinterpreted the claims of the application, or misinterpreted and wrongly applied the prior art relevant to the application.

If this is successful, the patent office can either order the issue of a patent for the application or correct the parts of the examination that were found faulty. If the appeal is unsuccessful, however, the rejection will be upheld.

These appeals, however, are rare. Less than two percent of all patents were decided by the Board of Paten Appeals and Interferences in the US. Often, if the examiner and applicant cannot agree, the patent is abandoned.

Abandonment can occur at any point during the application process. It can even be used after the patent has been granted. Often this occurs during prosecution when the applicant cannot convince the patent office to revoke its rejection of the application. However, abandonment is often assumed if the applicant does not respond to an office action within a certain period of time. It can also occur if the applicant expresses intent to abandon the application.

If you choose to abandon your application, you are generally barred from seeking the same or similar patent at a later date.

A Patent Litigation Lawyer Can Help

If you are considering patenting, contact the patent litigation attorneys of Williams Kherkher at 800.761.3187.