The response of an applicant to an action by the Office must be made within a prescribed time limit. The maximum period for response is set at 6 months by the statute which also provides that the Commissioner may shorten the time for reply to not less than 30 days. The usual period for response to an Office action is 3 months. A shortened time for reply may be extended up to the maximum 6–month period. An extension of time fee is normally required to be paid if the response period is extended. The amount of the fee is dependent upon the length of the extension. If no reply is received within the time period, the application is considered as abandoned and no longer pending. However, if it can be shown that the failure to prosecute was unavoidable or unintentional, the application may be revived by the Commissioner. The revival requires a petition to the Commissioner, and a fee for the petition, which should be filed without delay. The proper response must also accompany the petition if it has not yet been filed.
Appeal to the Board of Patent Appeals and Interferences and to the Courts
If the examiner persists in the rejection of any of the claims in an application, or if the rejection has been made final, the applicant may appeal to the Board of Patent Appeals and Interferences in the Patent and Trademark Office. The Board of Patent Appeals and Interferences consists of the Commissioner of Patents and Trademarks, the Deputy Commissioner, the Assistant Commissioners, and the administrative patent judges, but normally each appeal is heard by only three members. An appeal fee is required and the applicant must file a brief to support his/her position. An oral hearing will be held if requested upon payment of the specified fee.
As an alternative to appeal, in situations where an applicant desires consideration of different claims or further evidence, a new continuation application is often filed. The new application requires a filing fee and should submit the claims and evidence for which consideration is desired. If it is filed before expiration of the period for appeal and specific reference is made therein to the earlier application, applicant will be entitled to the earlier filing date for subject matter common to both applications.
If the decision of the Board of Patent Appeals and Interferences is still adverse to the applicant, an appeal may be taken to the Court of Appeals for the Federal Circuit or a civil action may be filed against the Commissioner in the United States District Court for the District of Columbia. The Court of Appeals for the Federal Circuit will review the record made in the Office and may affirm or reverse the Office’s action. In a civil action, the applicant may present testimony in the court, and the court will make a decision.
Interferences
Occasionally two or more applications are filed by different inventors claiming substantially the same patentable invention. The patent can only be granted to one of them, and a proceeding known as an “interference” is instituted by the Office to determine who is the first inventor and entitled to the patent. About one percent of the applications filed become involved in an interference proceeding. Interference proceedings may also be instituted between an application and a patent already issued, provided the patent has not been issued for more than one year prior to the filing of the conflicting application, and provided that the conflicting application is not barred from being patentable for some other reason.
Each party to such a proceeding must submit evidence of facts proving when the invention was made. In view of the necessity of proving the various facts and circumstances concerning the making of the invention during an interference, inventors must be able to produce evidence to do this. If no evidence is submitted a party is restricted to the date of filing the application as his/her earliest date. The priority question is determined by a board of three administrative patent judges on the evidence submitted. From the decision of the Board of Patent Appeals and Interferences, the losing party may appeal to the Court of Appeals for the Federal Circuit or file a civil action against the winning party in the appropriate United States district court.
The terms “conception of the invention” and “reduction to practice” are encountered in connection with priority questions. Conception of the invention refers to the completion of the devising of the means for accomplishing the result. Reduction to practice refers to the actual construction of the invention in physical form: in the case of a machine it includes the actual building of the machine, in the case of an article or composition it includes the actual making of the article or composition, in the case of a process it includes the actual carrying out of the steps of the process. Actual operation, demonstration, or testing for the intended use is also usually necessary. The filing of a regular application for patent completely disclosing the invention is treated as equivalent to reduction to practice. The inventor who proves to be the first to conceive the invention and the first to reduce it to practice will be held to be the prior inventor, but more complicated situations cannot be stated this simply.