Patent Appeals at the USPTO
Appellate Advocacy and Practice
A practice manual for appeals to the USPTO BPAI (Updated edition)
by Joel Miller
Published February 2012, 188 pp., 7 x 10 softcover. ISBN: 978-1-936543-01-4.
To purchase the book, please visit Publishers’ Graphics Bookstore.
This is an updated version of the 2010 book, incorporating the revisions to the ex parte appeal rules announced last November, and recent Federal Circuit case law. Please note that the 2010 edition of the book remains valid for appeals having a notice of appeal date earlier than January 23, 2012.
From the Introduction
Appeals to the Board from adverse decisions of patent examiners and from reexamination have long been an important aspect of patent practice at the USPTO. And, in the past few years, the volume of ex parte appeals taken to the Board has increased significantly and the Board itself has grown considerably in size. Appeals from inter partes reexamination requests have also increased in number.
Although conducted within the USPTO, appeal practice before the Board differs markedly from the prosecution of a patent application before an examiner. In the latter, proceedings are typically conducted in writing before a single individual. By contrast, even though the briefing occurs before the examiner, the Board is an appellate tribunal, handling and deciding appeals in much the same fashion as a federal or state appellate court. Success at the Board requires skills in patent prosecution and appellate advocacy. You need to prepare a well-written brief and, where a hearing is held, present a cogent argument to the panel, all the while adhering to good patent prosecution practice.
This book presents the procedural requirements for appeals to the Board, drawing from the rules (including the 2012 revisions to the ex parte appeal rules), the USPTO Manual of Patent Examining Procedure (MPEP), and case law, as well as principles of appellate advocacy tailored to practice before the Board. The book addresses issues that arise in appeals from patent examination and reexamination. The reader should have a thorough understanding of patent prosecution practice.
Periodically, new developments, rule changes, and other resources will be posted on this website at Current Developments at the BPAI.
Chapter Overview
1 Overview of the appeal process
2 The legal framework for appeals
3 The Board – jurisdiction, structure, and operation
4 Matters from which an appeal may be taken
5 Laying the groundwork for appeal
6 Pre-appeal brief requests for review
7 The notice of appeal
8 Amendments, affidavits, and evidence
9 The appeal brief
10 The examiner’s answer
11 Reply and rebuttal briefs
12 Oral hearing
13 The Board’s decision-making process
14 Judicial review
15 Ethical considerations
Organization of the book
Since the procedures for ex parte appeals and appeals from inter partes reexamination proceedings are similar in many respects, the two are treated together throughout the book. The book begins with an overview of the appeal process in Chapter 1, continuing in Chapter 2 with a discussion of the legal framework for appeals, and an explanation of the structure and responsibilities of the Board in Chapter 3.
Chapter 4 discusses the types of matters from which you may appeal, and Chapter 5 covers the burdens of proof during examination and the prima facie case, noting the steps you might take to preserve and sharpen the issues for appeal. Chapter 6 outlines the pre-appeal brief request for review, a process that could result in an allowance of the patent application short of a fully-briefed appeal decided by the Board.
The mechanics of bringing an appeal begin in Chapter 7, with the notice of appeal. Amendments, affidavits, and other evidence submitted at times during the appeal process are treated in Chapter 8. Next, in Chapter 9, the book details the appeal brief, the requirements of the rules, and how to draft a compliant and persuasive brief. This is followed by a discussion of the examiner’s answer in Chapter 10, and the ex parte reply brief and inter partes rebuttal brief in Chapter 11. Chapter 12 explains the oral hearing, how to prepare for the hearing, select the matters you will discuss, intelligently use the allotted time, and anticipate and respond to questions from the judges.
The decision-making process at the Board is the subject of Chapter 13 and judicial review is covered in Chapter 14; both chapters include a discussion of the standard of review. A chapter new to this edition, Chapter 15, addresses ethical considerations in the appeal process.