Appeals at the PTO
Patent and Trademark
Practice Group Meeting
August 19, 2010
Patent Appeals
• Grounds for Appeal
– Any claim rejected twice
– Appeal v. Petition (e.g., restriction requirement
complaints)
• Timing
– Notice of Appeal: within time period for reply set
forth in the Office Action
– Brief: within 2 months of Notice of Appeal
(extendable for another 5 months)
Appeal Brief
• Brief Format
– Headings - in this order & begin each on a new page
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Identification page (recommended)
Table of contents (recommended)
Real party in interest
Related appeals and interferences
Status of claims
Status of amendments
Summary of claimed subject matter
Grounds of rejection to be reviewed on appeal
Argument
Claims appendix
Evidence appendix
Related proceedings appendix
• Brief Content
– No new evidence or amendments
– Respond to every ground of rejection presented for review
– Claims may be argued separately or as a group
Procedure
• Examiner’s Options:
– (1) reopen prosecution with new ground of rejection;
– (2) withdraw rejection and allow application, or
– (3) maintain appeal and submit Examiner’s Answer within
2 months
 Appeal Conference with Examiner, her supervisor and another
Examiner to discuss the case
• Applicant’s Reply Brief
– Within 2 months from Examiner’s Answer
• Oral Hearing
– Request within 2 months from Examiner’s Answer
• Supplemental Examiner’s Answer
– No new grounds of rejection
Procedure
• Board’s Options:
– (1) affirm, (2) reverse, (3) remand, or (4) new ground of rejection
• Option (2) reverse
– Jurisdiction passed back to Examiner
– If no direction is given by the Board, the Examiner may (a) allow
the case, or (b) reopen prosecution and enter a new rejection
– Important distinction: reversal is not allowance, the Examiner (not
the Board) allows the case
• Option (3) remand
– Board may note a specific reason for remand:
 For further prosecution where the Board feels that the most pertinent
art has not been cited
 For further consideration of rejection
 To consider amendment or evidence
• If Dissatisfied with Board Decision:
– Request Rehearing (within 1 month)
– Appeal to the Fed. Cir. (within 2 months)
– File Civil Action (within 2 months)
Pre-Appeal Brief Review Conference
• Applicability
– Rejection has clear legal or factual deficiency, as
opposed to interpretation issues
• Who decides?
– A panel of examiners (including the examiner of
record and a supervisor)
• Timing
– File “Request for Pre-Appeal Brief Review” with
Notice of Appeal
– Regular Appeal Brief due the later of (a) 2months from the Notice of Appeal, or (b) 1-month
from Pre-Appeal Brief Review panel decision,
with extensions
Pre-Appeal Brief Review Conference
• Format / Content of Request
– 5 pages or less
– Tip: use buzz words from the OG Notice
 “clearly improper rejection based on error in fact”
 “omission of essential element required to establish
a prima facie rejection”
 “X limitation is not met by Y reference”
– Refer to arguments already of record, rather than
repeating arguments
• Panel Options:
– (1) Allow the application,
– (2) Send on to Appeal Board for review, or
– (3) Remand to Examiner to reopen prosecution
Trademark Appeals
• Grounds for Appeal
– Rejection made in Final Office Action
– Appeal v. Petition
 Petitions are for issues regarding compliance with
technical provisions of the Trademark Act
• Timing
– Notice of Appeal: within 6 months of Final Office
Action
– Brief: within 60 days of Notice of Appeal
 or 60 days from TTAB notice resuming appeal
proceedings following denial of Request for
Reconsideration
Requests for Reconsideration
• Timing
– Within 6 months of Final Office Action
– Does not extend time for initiating appeal
 Must still file NOA within 6 months to preserve right
to appeal
• Content
– Applicant may submit new, additional evidence
Requests for Reconsideration
• Examining Attorney’s Options:
– (1) Deny Request
 May submit new, additional evidence “directed to
the issue for which reconsideration is sought”
– (2) Withdraw rejection and allow application
• Procedure
– If Request for Reconsideration and NOA both
filed, TTAB will acknowledge appeal, suspend
appeal proceedings (including time to file appeal
brief), and remand to Examining Attorney for
review of the Request for Reconsideration
– If Request denied, Appeal Brief now due 60 days
from TTAB Notice resuming the appeal
proceedings
Appeal Brief
• Appeal Brief Format / Content
– 25 pages or less, doubled spaced
– No new evidence
– Alphabetic index of cited cases
 need not include other formal requirements of a
trial brief
– If citing to 3rd party registrations, include copy
of registrations to make them “of record”
Procedure
• Examining Attorney’s Options:
– (1) Maintain appeal and submit Examining
Attorney’s brief
 60 days from receiving Applicant’s Appeal Brief
 No new evidence
– (2) Withdraw rejection and allow application
• Applicant’s Reply Brief
– Within 20 days from Examining Attorney’s brief
• Oral Hearing
– Request within 10 days from due date for Reply
Brief
Procedure
• Board’s Options:
– Affirm,
– Reverse, or
– Remand for consideration of a different issue
• If Dissatisfied with Board Decision:
– Request Rehearing (within 1 month)
– Request Reconsideration (within 1 month)
– Request Modification (within 1 month)
– Appeal to the Fed. Cir. (within 2 months)
– File Civil Action (within 2 months)