How to write an appeal brief if your patent application has been rejected
If an examiner has twice rejected your claims or issued a final rejection of your patent application, you may file an appeal before the Patent Trial and Appeal Board (PTAB or the Board).
Keep in mind, the Board determines whether an examiner erred based on the arguments presented in the appeal brief. The Board generally will not consider issues or arguments not presented in the appeal brief.
So, a well-written appeal brief is crucial to a successful appeal and should include these key ingredients:
Your strongest arguments. Weaker arguments may dilute stronger arguments, so it is best to leave out those. Stronger arguments focus on the examiner’s rejections, the relevant law, and the claim, and explain why the examiner erred (with good supporting evidence).
Arguments focused on claim terms. Patent claims define the subject matter to be protected. Rejections focus on the claim language, and your arguments should, too.
For example, you could argue that the examiner erred because the prior art does not teach a certain claim element. But avoid just stating that the prior art does not teach the claim element; also give the reasons you think this.
Claim terms are given the broadest reasonable interpretation in light of the specification (the section in which the inventor describes his or her invention in full). Disagreements over claim interpretation between you and the examiner are often dispositive of the appeal. Consequently, you should explain to the Board why the specification supports your interpretation.
Clear organization, with headings and subheadings. Each rejection must be argued under a separate heading that identifies the rejected claims by number, the statutory basis for the rejection, and the applicable prior art, if any.
For example, a heading may be: “Claims 1–4 are not obvious under U.S. Patent Code Title 35 Section 103, based on Smith and Jones.” If a rejection applies to more than one claim, you may argue the claims separately, as a group, or in subgroups. Any claim argued separately or as a subgroup should be placed under a separate subheading that identifies the claims by number.
You should carefully decide how to group the claims because the groupings affect how the Board evaluates your arguments.
The Board evaluates the rejection of each separately argued claim. But for claims in a group or subgroup, the Board may select a single claim and decide the rejection for all claims in the group by evaluating only the one selected claim. All the other claims in the group stand or fall with the one selected claim.
Find more tips about writing an effective appeal brief and an appeal brief template at uspto.gov/patents/ptab.