1. Filing a Notice of Appeal
2. The Appeal Brief Contents
3. Tips for Writing Your Patent Appeal Brief

A patent appeal brief example is a document you file with the Patent Trial and Appeal Board (PTAB) after a patent examiner has rejected your patent application a second time.

It is critical you follow the rules for filing a patent appeal brief. If you do not, your case could be dismissed. Your appeal is most likely to succeed when someone other than you can show that the examiner missed something during prosecution.

Filing a Notice of Appeal

If you want to appeal an examiner's second rejection of your application, you first must file a notice of appeal. In this notice, you will indicate what you are appealing. Sign the notice and include the fee. Mail it at least three months from the date you mailed the office action, though it extends up to six months under certain rules.

When you file your notice of appeal, one option is to have a panel of examiners review the rejection. This panel will usually be made up of the examiner who rejected the application, that examiner's SPE, and a third examiner. Once they have reviewed the case, they can choose to:

  • Reopen prosecution
  • Leave prosecution closed, but permit the claims that are already pending
  • Permit the application to stay on appeal
  • Reject the request

If you are not convinced the examiner is willing or competent to listen to your arguments, this board approach is worth considering. It is also an inexpensive way to have your case reviewed before appeal.

The Appeal Brief Contents

You must submit your appeal brief no more than two months after you receive the Patent and Trademark Office's notice of appeal. 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. Do not forget to include the appropriate fees.

According to the Manual of Patenting Examining Procedure (MPEP), your appeal brief has to include at least (in this order):

  1. Statements from you, the inventor, or those who are the actual subjects of the application if not you
  2. A list of all related appeals and rulings, including an appendix detailing any decisions
  3. The current status of any pending claims indicating which claims you are appealing
  4. The current status of any amendments filed after the application was finally rejected
  5. A statement summarizing what each claim is about, including references to specifications and drawings
  6. The reason given for why your application was rejected that you want reviewed
  7. The reason why you believe the examiner's decision should be reversed
  8. All the claims under consideration in your appeal in an appendix
  9. All the evidence under consideration by the Board in an appendix
  10. Any prior decisions of either the Board or a court in an appendix

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,

  • The status of pending claims
  • The status of amendments
  • The reason why your application was rejected

If you need to present evidence not previously presented, you must file a continuation application.

Where you have arguments that apply to more than one claim, you can submit each claim's argument separately. The Board will choose one claim to represent them all and weight the argument against that claim.

Tips for Writing Your Patent Appeal Brief

  • Do not restate the arguments you used on your rejected application. They were clearly unpersuasive.
  • Present your best, strongest arguments first. If it makes sense, group the claims to which each argument applies together with each argument. Otherwise, you can present each claim and its relevant argumentation.
  • Use case-law in your brief. The Board uses case-law to make its decisions. Cite cases that support your argument. Also, point out where the examiner did not use case-law appropriately.
  • Dispute errors of fact and law, such as references to non-analogous art, or use of impermissible hindsight.
  • If claim construction is a central issue of contention, present your understanding of the claim term.

For help with terminology and to see prior decisions of the board, visit the Patent Trial and Appeal Board website.

If you need help with your patent appeal brief, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.