This article emphasizes the importance of utilizing ex parte appeals at the USPTO as a valuable strategy in patent prosecution. The author shares personal experiences from filing around 160 appeals and offers practical guidelines to enhance success rates. Key recommendations include prioritizing technical arguments supported by relevant case law and organizing the appeal based on argument strength. Additionally, the author stresses the relevance of understanding PTAB’s reversal language through reviewing past decisions to inform and craft effective appeal briefs.
If the Examiner's reasoning is unreasonable, call the examiner's reasoning unreasonable.... Examiners will not hold it against you.... If you are attacking the examiner's work product, and not the examiner personally, this should not be an issue.
The cleanest and most common way to win an ex parte appeal at the Patent Trial and Appeal Board (PTAB) is to have convincing technical reasoning that the prior art does not teach what the examiner says that it teaches.
Based on my regular review of PTAB ex parte appeal decisions, I have been able to identify case law the PTAB commonly cites to reverse rejections.
I recommend reading PTAB ex parte appeal reversals, so that you have a good understanding of how the PTAB writes a reversal.
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