Posts Tagged: "ex parte appeals"

Practical Tips for Writing Ex Parte Appeal Briefs

When it comes to ex parte appeals, the kid gloves come off. It’s always nice to be easy-going with the examiner when working directly with that person, but if an impasse is reached and you need to appeal, then there’s no reason to go easy anymore. Don’t be disrespectful, but it’s okay to be rigorous and articulate. With that in mind, below are a few practical tips for writing an appeal brief to the Patent Trial and Appeal Board (PTAB). None of them are meant to serve as a magic bullet but they might help you get a leg up. And course, you need to have a decent case to appeal in the first place or nothing I say below is going to help very much.

As USPTO Begins Accepting Applications for PTAB Pro Bono Program, Inventor Community Calls for Stronger Action to Curb PTAB Abuses

On June 7, the U.S. Patent and Trademark Office’s (USPTO’s) Director’s Blog published a post authored by USPTO Director Kathi Vidal announcing that the agency is now receiving applications from inventors seeking free legal assistance to bring ex parte appeals of patent examiner rejections to the Patent Trial and Appeal Board (PTAB). While Vidal’s announcement is certainly welcome news to many inventors who are in financial need, it fails to address larger issues faced by inventors at the PTAB that have been voiced by members of Congress and the inventor community alike in recent months.

Where Have All of the Ex Parte Appeals Gone?

Once a rejection by the U.S. Patent and Trademark Office (USPTO) is designated as at least one “final” office action (which typically occurs when the office action is at least a second office action issued after filing), the applicant has the opportunity to engage with a different decision-maker. That is, the applicant can appeal a pending rejection to the Patent Trial and Appeal Board (PTAB), and at least three PTAB judges will then evaluate the rationale provided by the examiner and applicant (referred to as an “appellant” when the PTAB is handling a matter). Alternatively, the applicant can continue to engage with the examiner (which may require filing a Request for Continued Examination and paying the associated fee) or can let the application go abandoned.

Boalick and Hirshfeld Highlight PTAB Stats, USPTO Training Efforts During Virtual LEAP Program

On Friday, March 26, the United States Patent and Trademark Office (USPTO) conducted virtual LEAP training. LEAP stands for Legal Experience and Advancement Program and is a series the USPTO is fostering in order to help inexperienced practitioners develop the skills and practical experience necessary to effectively advocate on behalf of clients. Previously, the USPTO had offered LEAP training with respect to contested cases challenging patents post grant. On this day, however, the training focused on ex parte appeals to the Board from an examiner, which Patent Trial and Appeal Board (PTAB) Chief Judge Scott Boalick characterized as “the bread-and-butter work” of the PTAB.

Autopilot or Advocate? Raising the Bar in Ex Parte Appeals at the USPTO

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.