Hearing aids: Practical lessons from a patent appeal hearing

The problem: Hitting a brick wall

This hearing originated from a patentable subject matter objection being raised during examination, which are notoriously tricky to overcome for computer-implemented inventions. After four examination reports and a forthcoming acceptance deadline, we filed a divisional application for our client to keep their rights alive. Unsurprisingly, the first examination report of the divisional application raised the same objection, so we believed a hearing would be the best way to progress this application.

Normally, applicants reach the very end of the 12-month acceptance period to request a hearing. However, given the intractability of the patentable subject matter objection, we advised our client to request a hearing early. This decision had important consequences.

Complicating matters was uncertainty around whether amendments could still be filed after requesting the hearing. Advice from the Patent Office suggested examination essentially stops once a hearing is requested, leaving it up to the examiner’s discretion whether to consider any amendments. We filed amendments during this period to have everything on the Register before the hearing commenced. However, the fate of these amendments was unclear.

The twist: Testing the limits of amendments

While the hearing was engaging, the Hearing Officer decided to maintain the patentable subject matter objection. Surprisingly, the Hearing Officer did not consider the amendments filed after requesting the hearing, on the basis that no formal objections had been raised against them. As a result, the case was sent back to the original examiner, resuming the examination that had effectively stopped.

Why did this matter? Because without those amendments, the application would likely have been refused without a further opportunity to file a further divisional application, despite being within the 12-month acceptance period. Luckily, as a result of these ‘sneaky’ amendments, we were able to file a divisional application and fight for another day.

The outcome: A narrow escape

Ultimately, the amendments kept the application alive and created space for further examination through a divisional application. However, the process highlighted the risks of requesting a hearing too early, as the Hearing Officer could have refused the application despite still being within the 12-month acceptance period.

Hearing Officers do have discretion to extend or reset deadlines when a decision is issued after the 12-month period. However, when a hearing is requested early, a decision can be issued within the original acceptance window with the acceptance deadline remaining unchanged, as in this case.

The takeaway: Key lessons

The experience of this tale offers some clear, practical lessons for appeal hearings:

• File a divisional application before the hearing date (either the date of filing the written submissions or date of the oral hearing) if this is not a “last ditch” effort for acceptance. Do not rely on ‘sneaky’ amendments to trigger a resumption of examination
• Amendments made after requesting a hearing may not be considered by the hearing officer. It may be more beneficial to file the amendments earlier, obtain a further examination report, and then request the hearing.
• Be careful of the final acceptance deadline. Usually hearing decisions are issued after the 12 month acceptance deadline and the Hearing Officer gives additional time to place the application in order for acceptance. However, if you request a hearing early, expect the original deadline to remain in force.