Posts Tagged: appeals


Cognitive Dissonance: How the PTAB Reported Appeal Statistics Ruins the Data for Everyone

The PTO reports a case as affirmed if all claims are rejected for at least one issue on appeal and reversed if all claims are reversed for …
By Adam Stephenson
28 days ago 2

Ignorance of the Law is No Excuse for Cost of the USPTO’s High ex parte Appeal Reversal Rates

As the old saying goes: Ignorance of the law is no excuse. So there seems to be no good reason that the Examining corps’ inability to apply …
By Adam Stephenson
3 months ago 8

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 …
By Steve Brachmann & Gene Quinn
7 months ago 17

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
7 months 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
9 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
10 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
1 year 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
1 year 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
1 year 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
1 year 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
1 year 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
2 years 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
4 years ago 5