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Another take on the new BPAI filing fee February 13, 2012

Posted by Brian Schar in General, Patent prosecution, USPTO.

In the patent blogosphere, there has been a lot of angst about the proposed fee for proceeding to the BPAI after filing an appeal brief.  It will cost $2500, but there will be no fee for the appeal brief itself.  I do not disagree with the many voices that object to this cost.  However, I have a different perspective.  My practice is almost entirely within a single Technology Center.  I find that, more often than not within that TC, the Examiner will reopen prosecution after receiving my appeal brief – sometimes 2 or even 3 times in a row.  Under most circumstances, I simply respond by filing a new appeal brief, which costs nothing in the current system.  However, this USPTO-generated churn can burn through a year or more of time.  If I could pay a $2500 fee and be guaranteed of going to the BPAI, rather than having prosecution reopened, I would gladly pay that fee up-front in order to get in line at the BPAI.


1. AAA JJ - February 15, 2012

My understanding of the proposed rule is that you only have to pay the $2500 fee after the issuance of an examiner’s answer (to then get your appeal docketed to the BPAI). So if the examiner continually re-opens, and doesn’t issue an answer, the fee would never be due.

Brian Schar - February 15, 2012

That’s still a plus. I need to read the new rules in detail, but I was hoping that payment of the $2500 fee would trigger motion of the case to the BPAI regardless of any desire of the Examiner and the Art Unit to churn it through reopened prosecution.

AAA JJ - February 16, 2012

The BPAI will never get jurisdiction over the application until the examiner issues the answer. The examiner can effectively prevent review by BPAI for the entire 20 year term by re-opening.

I always pre-appeal. That way if I get a panel decision to proceed with filing the brief and I do file the brief, but receive something other than an examiner’s answer, I call the TC Director immediately and express my extreme disappointment.

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