If you need help with your patent appeal brief, you can post your legal need on UpCounsel's marketplace. If claim construction is a central issue of contention, present your understanding of the claim term.įor help with terminology and to see prior decisions of the board, visit the Patent Trial and Appeal Board website.Dispute errors of fact and law, such as references to non-analogous art, or use of impermissible hindsight.Also, point out where the examiner did not use case-law appropriately. The Board uses case-law to make its decisions. Otherwise, you can present each claim and its relevant argumentation. If it makes sense, group the claims to which each argument applies together with each argument. Present your best, strongest arguments first.Do not restate the arguments you used on your rejected application.Tips for Writing Your Patent Appeal Brief The Board will choose one claim to represent them all and weight the argument against that claim. Where you have arguments that apply to more than one claim, you can submit each claim's argument separately. If you need to present evidence not previously presented, you must file a continuation application. The reason why your application was rejected.While this list is what the Manual prescribes, it also says that the Board will not reject your appeal if certain of these items are not present, namely, Any prior decisions of either the Board or a court in an appendix.All the evidence under consideration by the Board in an appendix.All the claims under consideration in your appeal in an appendix.The reason why you believe the examiner's decision should be reversed.The reason given for why your application was rejected that you want reviewed.A statement summarizing what each claim is about, including references to specifications and drawings.The current status of any amendments filed after the application was finally rejected.The current status of any pending claims indicating which claims you are appealing.A list of all related appeals and rulings, including an appendix detailing any decisions.Statements from you, the inventor, or those who are the actual subjects of the application if not you.Do not forget to include the appropriate fees.Īccording to the Manual of Patenting Examining Procedure (MPEP), your appeal brief has to include at least (in this order): If you requested a review of the rejection first, you must file your appeal brief no more than thirty days after receiving the panel's decision. You must submit your appeal brief no more than two months after you receive the Patent and Trademark Office's notice of appeal. It is also an inexpensive way to have your case reviewed before appeal. If you are not convinced the examiner is willing or competent to listen to your arguments, this board approach is worth considering. Permit the application to stay on appeal.
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