Washington, D.C. intellectual property lawyer Derek Meeker shares his insights about ex parte appeals.

He explains that in patent prosecution, it’s common to reach a point where some claims are allowable. However, there are instances when the examiner rejects the claims — sometimes incorrectly, or due to a factual dispute. In such situations, it becomes important to consider an ex parte appeal.

If the examiner’s rejection is clearly wrong, a pre-appeal might be appropriate. But if the matter involves factual disagreement, pursuing a full appeal may be the better course. Proceeding with an appeal can be costly and time-consuming, often taking several years, yet it can also be a strategic move.

In some cases, the examiner may indicate that certain claims are allowable, but based on the prior art, broader claims might still be achievable. In those instances, he advises accepting the allowable claims to secure a patent while planning to file a continuation to pursue broader claims—potentially through the appeal process.

He emphasizes the importance of having a team experienced in appeals to help assess whether moving forward is the right decision. His team has handled numerous successful appeals and participated in multiple oral arguments, both in person and via video conference—even before the pandemic. While every case is unique, he notes that their depth of experience helps clients make informed choices about whether an appeal is a sound investment for their patent budget.