PATENT TRIAL AND APPEAL BOARD PRESENTS: Intro to Ex Parte Appeals

PATENT TRIAL AND APPEAL BOARD PRESENTS: Intro to Ex Parte Appeals

Ex Parte appeal basics

1. Appeal to the Board
2. Argue to the Board

 

A.Briefs

B.Optional oral hearing

3. Board consideration
4. Board decision
5. Optional post-decision action

Step 1: APPEALS TO BOARD PANELS

35 U.S.C. §6(c) requires a final decision by a minimum of a three-member panel:

• Also applies to derivation, post-grant review, and inter partes review proceedings
• Members designated by the director

 

Step 1: THE BOARD’S APPELLATE JURISDICTION

35 U.S.C. §134 defines who may appeal to the Board

• Patent applicants with claims “twice rejected” may appeal from the decision of the primary examiner.
• In an ex-partereexamination, patent owner may appeal any final decision unfavorable to the patentability of any claim.
• In an inter partes reexamination, patent owner and third-party requestor may appeal an adverse ruling in any final decision.

Step 1: GETTING TO THE BOARD

• Twice or finally rejected claim(s)
• Notice of appeal

 

Step 2: ARGUING TO THE BOARD

1. Appellant files an appeal brief
2. Examiner files an Examiner’s answer
3. Appellant files a reply brief
4. (Optional) Appellant files an oral argument request

 

Step 3: BOARD CONSIDERATION

• Board reviews arguments and evidence for an error identified by the appellant to determine if the examiner’s findings and conclusions are supported by a preponderance of the evidence
• Optional oral argument

Step 4: BOARD DECISION OR DISPOSITION

• Affirm
• Affirm-in-part
• Reverse
• Vacate (rare)
• Remand (rare)
• Dismiss (rare)
• New ground of rejection (37 C.F.R. §41.50(b))

 

Step 5: ACTION AFTER BOARD DECISION

• RCE: Request for Continued Examination
• Application returns to Examining Corps
• Request for rehearing
• By same Board panel
• Appeal
• S. Court of Appeals for the Federal Circuit
• then U.S. Supreme Court
• Civil action
• S. District Court for the Eastern District of Virginia