Appeals at the PTOPatent 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 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) 2-

months 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)