Autopilot or Advocate? Raising the Bar in Ex Parte Appeals at the USPTO

Despite their best efforts, patent practitioners may reach an impasse during negotiations with patent examiners at the United States Patent and Trademark Office (USPTO). If an applicant still desires patent protection, it can authorize the filing of a notice of appeal to the Patent Trial and Appeal Board (PTAB) and an associated appeal brief.

Over the years, I’ve observed some patent attorneys and agents approach ex parte appeals as essentially a document assembly exercise: arguments from past Office action responses are pasted into a template and then submitted to the PTAB. In my view, such an approach represents a missed opportunity to present the strongest possible case for patentability. In a worst-case scenario, it may even prevent a client from securing the patent protection it deserves.

To maximize clients’ chances of success, practitioners instead should approach appeals with the mindset of a strategist and advocate.

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