Remember these requirements, tips when appealing to the PTAB
If a USPTO patent examiner issues a second or final rejection of your invention, you might consider filing an ex parte appeal to the Patent Trial and Appeal Board (PTAB) to overturn it. When preparing an appeal brief outlining how you feel the examiner erred, keep in mind some important requirements and best practices.
First, determine whether the case is ready for appeal.
Ensure you’ve carefully revised your claim set. This includes determining whether the claims are as narrow and focused as necessary to avoid rejections based upon the prior art, but still broad enough to make business sense and protect your invention.
Additionally, ensure that the record includes all evidence you may need for an appeal—such as experimental evidence, evidence showing unexpected results of the invention, or expert declarations.
Next, consult resources to help navigate the requirements for an appeal brief. The USPTO has prepared appeal brief tools to help.
On the “What are ex parte appeals” webpage, you will find links to a detailed explanation of the nine steps of the appeal process.
At the “Preparing an ex parte appeal brief” webpage, you will find a template appeal brief document with all required sections of the brief laid out in order; instructional guidance for what information to include in each section; and an instructional video. These tools allow you to prepare an appeal brief that meets all formal requirements; it will also give some insight into more substantive issues on appeal.
Finally, craft your legal arguments on an issue-by-issue basis, and support each one with evidence.
Do not solely rely on citing case law or the MPEP (Manual of Patent Examining Procedure); instead, focus on the facts of the case and how the case law or MPEP, as applied to those facts, supports your position.
Remember your audience. PTAB judges have significant legal expertise and technical competence in your technology, so both legal and technical arguments are appropriate.
The scope of the arguments should track the claim limitations; arguments that do not relate to a requirement recited in the claims may be less persuasive.
Although you certainly should rely on your specification, features described in the specification will not be imported into the claims. The language must be in claims.
On appeal, the thrust of your legal arguments should show that the examiner made an error, because the examiner has the initial burden to present the initial showing (often called the prima facie case) of unpatentability. If the PTAB finds the examiner erred, it may reverse his or her rejections.
You can provide feedback on the appeals process via the PTAB Help and Suggestions Page at uspto.gov/patents/ptab/ptab-help.
Independent inventors and those new to the PTAB practice can access past episodes of the USPTO’s Inventor Hour webinars.
The sessions cover basics such as ex parte appeals and America Invents Act (AIA) trials, as well as useful information for practicing before the PTAB that includes oral hearing protocols, statistics, and more.
There will be an Inventor Hour on March 24 at noon ET. For more information, go to uspto.gov/about-us/events/inventor-hour-events.
