Posts Tagged: appeals


PTAB chief judge Ruschke discusses ex parte appeals, PGR reform and more with PPAC

Ruschke's claim that only PTAB judges familiar with the technology involved are assigned in ex parte appeals seems false based on what we know has happened in …

Ex Parte Appeal Oral Hearings: Making Your Case Right Before Decision Time

This data set shows that Oral Hearings are rarely conducted. (See Figure 1.) Across the 72,443 appeals, only 459 (0.63%) appeals had an Oral Hearing... As shown in Figure 4, Oral Hearings …
By Kate Gaudry & Sameer Vadera
18 days ago 1

The Federal Circuit should never use Rule 36 if a patent claim is invalidated

What happens if a patent owner who suffered that Rule 36 summary loss to Google at the Federal Circuit were to decide to sue another party – perhaps Apple – …
By Gene Quinn & Peter Harter
2 months ago 8

Alice on Dulany Street: How the PTAB handles 101 in ex parte appeals

In many of the decisions, the examiners and appellants had an opportunity to make arguments based on Alice before the PTAB reached a decision. Yet, the outlook …
By Eli Mazour & James Bennin
4 months ago 3

A Pre-Appeal Brief Conference is a Winning Strategy, Even if it Probably Won’t Lead to Allowance

After several articles and webinars discussing appeals outcomes at the USPTO, we have received numerous requests for Pre-Appeal Brief Conference data to explain how advantageous the program …

Federal Circuit recognizes its role as only an appellate court in Apple v. Samsung

This decision reestablishes what should always have been the case; namely that the Federal Circuit is an appellate court that does not consider evidence outside the record …
By Gene Quinn
8 months ago 13

Rule 36 Judgment: The growing problem of one word affrimance by the Federal Circuit

In PCT International, Inc. v. Holland Electronics, LLC, the use of a Rule 36 judgment is particularly disconcerting because the Federal Circuit upheld the issuance of a permanent …
By Gene Quinn
9 months ago 6

Steps the PTO must take to address low quality patent examination

While any system should always aspire to provide better quality, the patent system included, patent quality is a two way street that requires the Office to look …
By Gene Quinn
10 months ago 14

Ex Parte Appeals in the Post-Alice World

Amongst the appeals involving patent-eligibility rejections, the most recently filed appeal brief was filed in November 2015. Thus, all of the appeal briefs and most of the PTAB …
By Kate Gaudry & Samuel Hayim
10 months ago 17

The Impotence of the Patent Trial and Appeal Board

What is happening in TC 3600 is prosecution is being re-opened for the purpose of issuing Alice rejections. With the help of readers, so far I’ve found …
By Gene Quinn
10 months ago 79

Ex Parte Appeal as a Potential Means to Quick Allowances

We set out to study the life cycle of appeals by conducting a stage-by-stage analysis to identify what fraction of applications were exiting the appeal cycle and …
By Kate Gaudry & Sameer Vadera
1 year ago 6

10 Years Later – A Look at the Efficacy of the Pre-Appeal Brief Conference Program

For 61% of the non-defective requests, the panel decided that there was an actual issue for appeal, such that the applicant would either need to file an Appeal …

Is that Next RCE Really Going to Work?

Knowing when to give up on a patent application is one of the most critical questions facing for any patent applicant… When faced with the decision regarding …
By Gene Quinn
3 years ago 5

An Overview of the U.S. Patent Process

The first time you will substantively hear from the examiner is when the examiner issues what is referred to as a First Office Action on the Merits (…
By Gene Quinn
3 years ago 2

New Patent Fees: USPTO Exercises Fee Setting Authority

The final rules on patent fees will publish in the Federal Register on Friday, January 18, 2013. Fees are going up for most, but not as much as feared. …
By Gene Quinn
4 years ago 5