The best outcome for an appeal, like the best outcome for litigation, is often to avoid it in the first place. If you’d like to get your patent, but would prefer to avoid the delay (and patent term extension) a successful appeal can provide, perhaps we can help. A German medical device company did, and here’s what happened:
Researching an off-the-shelf cardiac pacemaker, the company figured out how to modify it to make it effective to extend survival not for cardiac patients, but for cancer patients. The company accordingly filed for a patent. Seven years of investment in prosecution, however, had borne little fruit: the patent application was published (US2009/0248101; PCT/EP2006/009530), teaching their competitors how to easily copy their product, but the patent application remained rejected. The manufacturer was thus trapped in the worst of all worlds: having taught its competitors how to copy its new product, it was unable to get a patent protecting it.
We were brought in to pursue an appeal. We were named new attorney on November 29th. Three weeks later, we had an initial meeting with the Examiner. The initial meeting surprisingly constructive: after discussing the rejections in detail, the Examiner agreed to withdraw all outstanding rejections and issue the patent – avoiding the expense and delay of an appeal.