TIPS FOR WRITTEN ADVOCACY IN APPEAL BRIEFS
Argument: Preliminary steps
- Review the prosecution history of your application
- Decide which rejections and which claims to address
- Identify your strongest arguments
Argument: Strategic considerations
- There is no limit on the number of pages
- BUTthe clearer and more concise your arguments, the better your chances of prevailing
- Present your strongest arguments first
- Avoid diluting your strong arguments with weaker ones
**BUT keep in mind: Any rejection you do not address, and any argument you do not present, cannotbe argued later.
Argument: Suggested format
- Address each ground of rejection under a separate heading
- Identify the ground of the rejection by claim number, statutory basis, and references (if any)
Argument: Claim grouping
- If the same argument applies to two or more claims, consider arguing the claims as a group under a single heading or sub-heading.
Argument: Arguing claims separately
- Use a separate heading or sub-heading for any claim that you want the PTAB to consider separately.
- The initial burden of proof rests with the examiner to clearly state the reasons for the rejection
- After the examiner satisfies his burden, then the burden shifts to you to explain why you believe the examiner has made an error.
Argument: explain why
- For ANY argument of examiner error, ALWAYS give reasons to support your position.