“To make the most compelling patentability case for clients, practitioners should abandon the autopilot playbook for ex parte appeals. In its place, they should adopt a dynamic approach driven by strategic advocacy, borrowing heavily from the toolkit of litigators.”
Despite their best efforts, patent practitioners may reach an impasse during negotiations with patent examiners at the United States Patent and Trademark Office (USPTO). If an applicant still desires patent protection, it can authorize the filing of a notice of appeal to the Patent Trial and Appeal Board (PTAB) and an associated appeal brief. Thus begins an ex parte appeals process in which a panel of at least three administrative patent judges (APJs) considers patentability of the rejected claims.
Over the years, I’ve observed some patent attorneys and agents approach ex parte appeals as essentially a document assembly exercise: arguments from past Office action responses are pasted into a template and then submitted to the PTAB. In my view, such an approach represents a missed opportunity to present the strongest possible case for patentability. In a worst-case scenario, it may even prevent a client from securing the patent protection it deserves.
To maximize clients’ chances of success, practitioners instead should approach appeals with the mindset of a strategist and advocate.
Appeals on Autopilot
Some practitioners employ an appeals playbook that reads something like this:
- Start by filling out the sections of an appeal brief template. After deciding which of the examiner’s rejections to appeal, find a template or repurpose an appeal brief from another application as a template. Then dive headfirst into preparation of the appeal brief, adding content to each section.
- Adhere rigidly to form. As per 37 CFR 41.37(c), an appeal brief must include, in the following order, these sections: real party in interest; related appeals, interferences, and trials; summary of claimed subject matter; argument; and claims appendix. Begin the appeal brief with boilerplate language referencing any final rejection, pre-appeal decision, extension of time, deposit account authorization, and the like. Then move directly to the real party in interest section. Take no liberties in adding contextual content to the brief.
- Copy and paste previously submitted arguments. For the argument section of the appeal brief, copy arguments from Office action responses preceding the appeal, paste them into your template, and make minimal revisions related to form, not substance.
- Submit the appeal brief when completely filled out. Once you’ve completed every section of your appeal brief, you’re ready to file it.
- Never request an oral hearing. To your knowledge, none of your colleagues requests oral hearings pursuant to 37 CFR 41.47. An oral hearing is always unnecessary, merely making an appeal more expensive. Also, you haven’t ever argued before an APJ or a district or appellate court judge and aren’t sure that you’d be up to the task.
This “autopilot playbook” offers a relatively quick and straightforward formula for handling appeals. For clients paying by the hour, it may reduce costs to appeal. And when a law firm and its client have an agreed fixed fee arrangement for appeals, it may enable the firm to get the work done as profitably as possible; profitability diminishes as more time is spent preparing the appeal.
Nevertheless, the autopilot playbook falls short in fundamental respects:
- It doesn’t tailor appeals to a legal audience—the APJs of the PTAB. All APJs have a law degree and a conversance with legal principles, analysis, and argumentation. The same can’t be said for all patent examiners. Yet, some practitioners equate the groups for purposes of appeals. As a result, their message isn’t finely tuned for maximum persuasive impact.
- It doesn’t educate the APJs. With its rigid adherence to form, the autopilot playbook is reticent to incorporate contextual information that can aid APJs in efficiently evaluating the merits. As such, APJs may need to spend inordinate time and effort getting their bearings.
- It doesn’t seize the opportunity for a reset. The playbook assumes that previously submitted arguments were highly effective (though not persuasive to the examiner) and thus substantially recycles them for use in the appeal. A practitioner who doesn’t test this assumption can’t make appropriate course corrections at the appeals stage to improve his or her client’s prospects.
- It doesn’t use all the available tools of advocacy. Oral hearings can be requested, when warranted, to further a client’s cause. Neglecting to consider the use of oral hearings and other tools of advocacy does clients a disservice.
Appeals Built Upon Strategic Advocacy
To make the most compelling patentability case for clients, practitioners should abandon the autopilot playbook for ex parte appeals. In its place, they should adopt a dynamic approach driven by strategic advocacy, borrowing heavily from the toolkit of litigators. Suggested best practices include:
- Strategize before you start drafting.
Instead of reaching reflexively for a template, first conduct a de novo assessment of the patent application’s prosecution history to date. This includes a review of the rejected claims, the examiner’s grounds of rejection, the cited references, your arguments and view of the merits, and how the case has evolved over the course of prosecution.
A fresh, critical look at these aspects—including strengths and weaknesses on both the examiner’s and your part—can help you strategize how to pitch your appeal most effectively.
Attorneys and agents who, without reflection, simply recycle old material in briefs basically treat the appeals process like filing a Request for Continued Examination (RCE) to enter a previously filed response; the client is paying for additional USPTO review of old material. In so doing, they may not be fully exploiting opportunities presented by the appeals forum.
- Write primarily for the APJs, not the patent examiner.
Appeal briefs should be intentionally crafted to take advantage of the APJs’ typically stronger command of legal matters, and their experiences and perspectives as arbiters of rejections spanning countless examiners and applicants.
With APJs as your intended primary audience, you’ll have latitude to present a more nuanced and fulsome challenge to the examiner’s rejections—one that encompasses both legal and technical facets.
- Help the APJs get up to speed.
Appeal briefs should concisely orient the APJs to events occurring during prosecution, the technology at issue, and other relevant contextual details.
For instance, providing a short primer on the technology, including its real-world impact and importance, can aid the APJs’ ability to dig into details, while enlivening what otherwise might seem to be dry technical subject matter. Such a primer can be inserted within or before the summary of claimed subject matter section of the brief.
Use of drawings, tables, or other visual devices, including pertinent annotations, also can help the APJs navigate concepts germane to the appeal.
Additionally, it may be appropriate to tactfully characterize, at a high level, the examiner’s actions during prosecution that are believed to have been stumbling blocks to receiving an allowance. Examples include (1) a pattern of conceding applicant arguments and then citing references no better than those previously cited, (2) fundamentally misunderstanding aspects of technology or references, and (3) fashioning obviousness rejections using many disparate references. Tactfully calling out the examiner’s conduct in a thematic manner can tell your client’s side of the story, while framing detailed arguments.
- Tighten up your best arguments, reinvigorate or jettison the weak ones.
Perfunctory regurgitation of old arguments isn’t strategic advocacy.
The appeals stage offers a prime vehicle for you to refine arguments in your client’s favor. Even strong arguments can be tweaked so as to leave nothing to chance. Weaker arguments should be shored up or entirely discarded; otherwise, they may dilute stronger arguments and imperil the entire appeal.
- Include a thoughtfully constructed introduction.
In the litigation world, it’s standard, unassailable practice to begin a brief with an introduction. An executive summary for the court, it provides context, summarizes the arguments to be presented, and generally sets the stage for what follows. It may even include a bit of storytelling and take artistic license to pique the court’s interest.
There’s a pragmatic reason for thoughtfully crafting an introduction: A highly effective introduction can contribute to the persuasive power of the brief.
Appeal briefs in ex parte appeals at the USPTO should be no different—they should include an introduction. Moreover, inclusion of an introduction won’t precipitate a notice of non-compliant appeal brief if the brief meets the requirements of 37 CFR 41.37.
Practitioners who decline to utilize introductions undermine their clients’ interests from square one. The absence of a meaningful introduction leaves to chance the APJs’ collective frame of reference for beginning their review of the merits. It allows—and forces—the APJs to sift through detailed material without a broad, applicant-friendly roadmap.
- Consider requesting an oral hearing.
An adjunct to appeal briefs, oral hearings are available to patent applicants when considered “necessary or desirable for a proper presentation of the appeal.” 37 CFR 41.47.
When developing a strategy, a practitioner should consider whether the appeal could benefit from an oral hearing. It may be that the criticality of patent protection to the client, or the nature of issues presented, warrant requesting an oral hearing. Failing to at least consider the potential value of an oral hearing deprives your client of an available tool of advocacy that could help carry the day.
An attorney or agent’s inexperience with oral hearings shouldn’t deter him or her from incorporating them into future appeal strategies. Preparing for and participating in an oral hearing not only can further client interests, but also enables a practitioner to cultivate valuable skills that can be leveraged going forward.
- Make use of the USPTO’s helpful tips.
On its website, the USPTO has compiled useful guidance related to the appeals process, preparing appeal briefs, and requesting and presenting at oral hearings. These resources can help practitioners get the most out of appeals for their clients’ sake.
- Explain your value proposition to clients and price appeals-related services accordingly.
Law firm pricing for handling appeals often is subject to client-mandated fixed fee schedules for patent prosecution. The pressure to minimize fees arguably incentivizes practitioners to fall back on the autopilot playbook; within a tight budget, they feel they only can devote limited time to the task at hand.
Nonetheless, it’s incumbent upon practitioners to educate clients on what it takes to fully capitalize on the appeals process, and then to propose pricing consistent with the work required.
Conversely, clients should demand that practitioners approach appeals through the prism of strategic advocacy. And they should be willing to pay fees commensurate with the value being delivered.
A client’s decision to pursue an ex parte appeal at the USPTO opens a door of opportunity: a practitioner can aggressively argue the client’s patentability case before a new forum, the PTAB. Strategic advocacy—not rote execution of the autopilot playbook—is the singular paradigm for meeting that opportunity. It’s how IP counselors tackle appeals.
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