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When your patent application is denied, you still have options. One of them is filing a patent appeal with the Patent Trial and Appeal Board (PTAB). But before you take that next step, it’s essential to understand that appealing a rejection is not the same as filing the original application. It requires a focused strategy and attention to detail. In this blog, we’ll walk you through some of the most common mistakes people make during the patent appeal process—and how you can avoid them.
Missing the Appeal Deadline
The clock starts ticking the moment you receive a final rejection. If you plan to appeal, you need to act quickly. Missing deadlines is one of the most common—and most preventable—mistakes applicants make.
Here’s how the timeline breaks down:
- You must file a notice of appeal within 3 months of the final rejection.
- After that, you have an additional 2 months to file your appeal brief.
It’s easy to lose track of these dates, especially if you’re juggling other deadlines. We recommend marking these on your calendar and setting reminders to follow up. Don’t wait until the last minute—USPTO deadlines are strict, and there’s little room for error once time runs out.
Failing to Address the Examiner’s Reasons for Rejection
When preparing your appeal, it’s not enough to restate arguments you made during prosecution. A common mistake is ignoring the actual reasons the examiner gave for rejecting your claims.
To move forward, you need to:
- Carefully review the examiner’s final rejection.
- Identify the logic or evidence the examiner relied on.
Respond directly and clearly to those points in your brief.
If you don’t confront the examiner’s reasoning head-on, the PTAB will likely side with the rejection. We recommend outlining the examiner’s key points first and then crafting responses that address each one clearly and thoroughly.
Submitting an Incomplete or Disorganized Appeal Brief
The appeal brief is not a casual letter—it has a required structure. Failing to follow the USPTO’s format or omitting necessary sections can result in delays or even outright dismissal of your appeal.
Your brief should include:
- A summary of the claimed invention
- A clear statement of the issues on appeal
- A response to each ground of rejection
- Supporting legal arguments, citations, and references
If your brief is hard to follow or missing sections, it can work against you. It’s worth taking the time—or getting help—to make sure everything is in place. A well-organized, concise, and complete brief gives your appeal the best chance of success.
Overloading the Appeal with New Evidence
Many applicants try to fix their rejection by adding new information or documents to the appeal. Unfortunately, this is another misstep. In most cases, you can’t introduce new evidence at this stage.
Trying to slip in new material may:
- Cause delays
- Lead to your appeal being dismissed
- Signal to the PTAB that your earlier application was incomplete
If you’ve come across new evidence that you think strengthens your case, the better move may be to file a Request for Continued Examination (RCE) instead of an appeal. We can help you decide which path makes the most sense.
Trying to Handle the Appeal Alone
Patent appeals are technical and legal in nature. Even if you handled your original application yourself, this next step involves a different set of challenges.
People who go it alone often run into problems like:
- Misunderstanding the format requirements
- Failing to make persuasive legal arguments
- Overlooking procedural rules
The earlier you bring in help, the better your chances are of building a strong appeal from the start.
Let Gearhart Law Help You Move Forward
Patent appeals are demanding, but avoiding these common mistakes can improve your odds. If you’ve received a final rejection and are considering an appeal, we’re here to help. At Gearhart Law, we’ll guide you through the timing, strategy, and structure you need to give your appeal a fair shot. Contact us today to talk about your case and how we can support you through the appeal process. Let’s protect the invention you’ve worked hard to develop.