**3. United States patent and trademark office**

An important difference of the United States patent system compared to the Brazilian system, for example, is the fact that several are the possible paths in the USPTO after a second or subsequent rejection of some claims in a patent application. The applicant may file a request for continued examination (RCE),9 file for an amendment after final (AAF),10 abandon the application, apply for a continuationin-part,11 or file a request for appeal [7, 8].

Appeals in the United States patent system aim to review objections related to the patentability of claims in a patent application and may be filed after a second action by the office rejecting some of these claims. These procedures, at the administrative level of the USPTO, are conducted by three administrative judges of the Patent Trial and Appeal Board (PTAB), which is the second-instance administrative body responsible for patents in this office. These judges must be people with technical and legal knowledge. The duties of this Board are: (a) to review decisions rejecting claims in patent applications; (b) to review reexamination appeals;12 (c) to conduct derivation proceeding,13

<sup>9</sup> Request for Continued Examination (RCE). This is a request to reopen the processing of the patent application yet at first instance through the payment of a specific fee, where the examiner will evaluate the changes in the claims and the arguments presented [8].

<sup>10</sup> Amendment after final (AAF). It is the filing of amendments to claims. This procedure, unlike the RCE, is free of charge; however, the examiner has little time to examine it [8].

<sup>11</sup> Continuation-in-part. A request for continuation of an original patent application, where a new matter or new claims are included in the application. This procedure does not end the first-instance proceeding for the new matter included.

<sup>12</sup> Reexamination. Procedure that can be requested by anyone, at any time during the term of a patent, aiming at reviewing a patent already granted.

<sup>13</sup> Derivation proceeding. This is a trial proceeding conducted at the Board to determine whether (i) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner's application, and (ii) the earlier application claiming such invention was filed without authorization.

(d) to conduct *inter partes* review;14 and post-grant review.15 Each of these procedures is conducted by a jury composed of at least three members of the board, who shall be appointed by the Director [9].

The USPTO's appeal procedure begins with the submission of a notice of appeal and payment of the required fee within no more than six months after the decision denying the patentability of the claims. Then, within a period of two months, which can be extended in exceptional situations for up to five months, the appeal brief must be filed with the office, including, in addition to the applicant's arguments regarding each of the objections raised by the examiner, other information, such as the name of the interested party, a concise explanation of the matter defined in each independent claim that has been rejected, and an appendix containing a copy of the claims under appeal [10].

A pilot program in progress at the USPTO provides the possibility of filing a pre-appeal request with the notice of appeal, where the applicant may request a review of the decision rejecting the claims. This request may not exceed five pages and must provide a series of succinct, concise, and focused arguments explaining the reasons why the review is being requested. This request is assessed by a panel of three examiners, including the examiner responsible for the decision to reject the claims. There are four possible outcomes for this review: (a) the request will continue under appeal, as the reasons were not sufficient; (b) the first-instance proceeding will be reopened; (c) the claims are accepted and, (d) the pre-appeal request does not meet the requirements and is disregarded [9].

After the appeal brief is filed with the USPTO, it does not immediately enter the jurisdiction of the appeal board. Appeals are first examined at an appeal conference, whose participants are the examiner responsible for the decision to reject the claims him/herself, his/her supervisor, and a third examiner who is able to consider the merits of the matter under appeal. After this procedure, the examiner may introduce new objections to reject the claims and reopen the case at first instance, may reverse the decision denying the claims, or may maintain the appeal, preparing a written response to the reasons for appeal. This reply must discuss all grounds for the challenged decision, enabling the examiner to add new objections to the request, if applicable.

After filing a notice of appeal with the USPTO, the filing of amendments to the application is not a matter of right. For acceptance of such amendments, two deadlines shall be considered and certain criteria shall be met. In the case these amendments are filed on the date or after the notice of appeal and before the appeal brief, such amendments may be accepted, as long as: (a) they cancel claims or comply with any requirement of form expressly set forth in a previous Office action; (b) they present rejected claims in better form for consideration, (c) they show good and sufficient reasons why the amendment is necessary and was not earlier presented.16 Amendments filed on or after the date of filing a brief may not make substantive amendments to the claims, but may be admitted: (a) to cancel claims, where such cancelation does not affect the scope of any other pending claim in the proceeding, or (b) to rewrite dependent claims into independent form.17 Amendments to the application are not accepted after the appeal enters the jurisdiction of the PTAB [10].

Like the filing of amendments to the application, the filing of new evidence or testimonies for inclusion in the application follows certain rules. If these amendments are

<sup>14</sup> Inter partes review. It is a trial proceeding conducted at the Board to review the patentability of one or more claims in a patent based on novelty and inventive step and only on the basis of prior art consisting of patents or printed publications.

<sup>15</sup> Post-grant review. It is a trial proceeding conducted at the Board to review the patentability of one or more claims on any ground and any matter of the prior art.

<sup>16</sup> 37 CFR § 1.116.

<sup>17</sup> 37 CFR § 41.33.

#### *Comparative Analysis of Appeal Procedures in the European, American and Brazilian Patent… DOI: http://dx.doi.org/10.5772/intechopen.98413*

filed at the time of or after filing the notice of appeal, but before the appeal brief, these amendments may be accepted if the examiner understands that: (a) such evidence and/or testimonies surpass all objections under appeal; (b) show good and sufficient reasons as to why the amendment is necessary and was not previously filed. In all other cases, they shall be rejected. New evidence may not be filed together with the brief.

In case a new objection to the application is added to the examiner's written response to the appeal brief, the appellant has two options: apply for a reopening of the proceeding at first instance or request that the appeal is maintained by filing, within two months, a reply to the examiner's opinion. Only after expiration of the deadline to file the reply with the office, the appeal is forwarded to the PTAB. In this reply, no amendments to the claims or new evidence are admitted.

In the American patent system, the appellant may request oral proceedings in circumstances in which the appellant thinks it is necessary or desirable for proper understanding of the appeal. This request is made in writing and shall be accompanied by the payment of a fee, within two months of the date of the examiner's response to the appeal brief, or on the date of filing of his/her reply.

After submission of the reply to the examiner's opinion, with or without oral proceedings, the three PTAB judges shall render the final decision, issuing a written decision, whose outcomes may be: (a) affirmance, a situation in which the examiner's decision of rejecting the claims is fully confirmed; (b) affirmance-in-part, a situation in which the examiner's decision of rejecting at least one of the claims is confirmed, but not all; (c) reversed, when the decision of denying the claims is not confirmed, and (d) new grounds for rejection, a situation in which the PTAB judges understand there are additional reasons for which at least one of the claims is not patentable. In this last case, the appellant has two options: apply for reopening of the proceeding at first instance and file amendments or evidence deemed necessary, or request a review of the case. In the review, the appellant shall define specifically where he or she believes the appeal board was mistaken.

**Figure 2** shows a schematic presentation of the procedures for appeal against rejection in the USPTO.

#### **Figure 2.**

*Schematic representation of the procedure for appeal against rejection in the USPTO.*
