Five Tactics to Improve PTAB Appeal Results for Your Clients

Hopefully, I convinced you in my previous article that ex parte appeals are an underutilized tool when prosecuting patent applications at the U.S. Patent and Trademark Office (USPTO). Over the course of my career, I have filed around 160 appeals and have guidelines that I follow to optimize my chances of winning. None of these tips are as complex as our client’s inventions, but they will increase your chances of success.

1. Lead with technical arguments, when possible, but always cite some case law.

The cleanest and most common way to win an ex parte appeal at the Patent Trial and Appeal Board (PTAB) is to have convincing technical reasoning that the prior art does not teach what the examiner says that it teaches. I try to present multiple arguments in each appeal, without including weak arguments that will hurt the credibility of my arguments, and I order them based on their strength. If I have strong technical arguments, I always lead with them. But that does not mean that I present these arguments without supporting case law.

Based on my regular review of PTAB ex parte appeal decisions, I have been able to identify case law the PTAB commonly cites to reverse rejections. Case law can strengthen technical arguments, and you should always include some of it in your appeal and reply briefs. While the best case law is dependent on your technical arguments, the case citations that I’ve found to be most useful will be discussed in another article to come. In any event, I recommend reading PTAB ex parte appeal reversals, so that you have a good understanding of how the PTAB writes a reversal. If you can word your briefs in the same manner as the PTAB words reversals, you make it easier for the PTAB to write a decision in your client’s favor.

Also, if you are a lawyer, you should be better at arguing case law than a non-lawyer examiner (some are attorneys). You are an educationally trained arguer who is skilled at reading case law, so use it to your advantage.

2. Only argue the claim language, and be mindful of Prosecution History Estoppel.

While litigators love to focus on telling a story and describing the benefits of an invention, I generally try to focus solely on the claim language. The PTAB does not care about the story (there are of course exceptions, such as unexpected results and 101 rejections), and reversal decisions issued by the PTAB in ex parte appeals focus on the claim language. For example, argue “the claim says ‘X,’ the prior art teaches ‘Y’” and explain why Y is not X or why it is unclear how Y could possibly be X. Making arguments directed towards unclaimed advantages or aspects of the invention can be used to limit the resulting patent in litigation, so be mindful of what you are arguing. Litigators often lament that applicants say too much when appealing, but litigators also love infringeable patent claims, which are more likely with an appeal. Maximize the upside and minimize the downside by appealing early and often, while being mindful of how you might be characterizing the claim language in an appeal.

Additionally, if a claimed feature is clearly conventional, but the examiner’s rejection of such feature is weak, consider not arguing this aspect of the rejection. If you argue a clearly conventional feature of the claim, you will likely forfeit infringement by doctrine of equivalents for this feature. Thus, if you have strong arguments that are more focused on the claim language at the point of novelty, you should ditch arguments towards the cited prior art not teaching conventional features.

As noted above, one of the reasons to file an appeal is to obtain claims that are broader than the examiner is willing to allow. I try to consider whether a prior art rejection has merit and ask myself if narrowing the claims will decrease the value of any resulting patent. Narrowing the claims can be beneficial and increase the value of the resulting patent if the prior art reads on the claims. But if you are making arguments during appeal that can be used by potential infringers to avoid liability, then you are negating this advantage of appealing.

Focus on arguments that cannot be used to limit the scope during litigation. For example, arguing that there is no reason to combine prior art references or that the examiner has not set forth reasoning having a rational underpinning are arguments that are less likely to come back to burn your client in the future.

3. Add fallback dependent claims in the first Response to Office Action if the interpretation of the prior art or the combination of references is unreasonable.

If you receive a meritless rejection, do not simply amend the claims to appease the examiner. Take the amendments that you think could be helpful and add them as new dependent claims. Further distinguish the currently cited prior art so that you have stronger arguments to present on appeal and so that you are not letting the examiner off the hook for a bad rejection. If the examiner upholds the initial rejections and does not allow any of the added dependent claims, this clarifies that the examiner is taking an unreasonable position. This makes the appeal decision easier for your client, and you are not stuck with unnecessary amendments to the independent claims.

This strategy is also helpful because these new dependent claims give you more ammo for arguing on appeal. The new dependent claims provide three main advantages for the appealing practitioner.

First, it increases the chances that you will win on appeal. More solid arguments increase the chances that the PTAB will not be overly differential to the examiner. All patent practitioners should know that patent examiner behavior is subjective and examiners’  allowance rates for the same technology can vary quite a bit. The same is true for PTAB judges, so use dependent claims to strengthen your position and help convince the more unreasonable PTAB judges.

Second, after you file an Appeal Brief, the examiner and two other senior examiners – usually a primary examiner, supervisory examiner (SPE), or quality assurance specialist (QAS) – hold a conference to review the Appeal Brief. The unreasonable rejection of dependent claims can cause the two senior examiners to take an unfavorable view of the examiner’s rejections as a whole and can cause the examiner to either reopen prosecution or issue a Notice of Allowance. It is also common for examiners to call you after the Appeal Brief and offer to allow the application if a dependent claim is added into an independent claim.

Third, if you have strong arguments to multiple dependent claims on appeal, you are creating quite a bit of work for the examiner. While more work alone will not cause an examiner to allow a patent application, I have no doubt that if an examiner is on the fence about allowing an application, the thought of extra work and losing an appeal will push the examiner over the fence.

4. Take the gloves off when attacking the examiner’s reasoning.

You do not gain anything by being deferential to the examiner on appeal. While I try to make statements during prosecution such as “the Office Action states” or “the Office’s position,” I am aggressive in attacking the “examiner’s assertions” on appeal. During prosecution you tone down your language because you are trying to convince an examiner that he or she is wrong. Lose that instinct at the door the second you decide to appeal, and do not simply repeat your remarks from an Office Action response. You are going to be much less convincing to the PTAB if you take this toned-down approach.

If the examiner’s reasoning is unreasonable, call the examiner’s reasoning unreasonable. If the examiner’s position misinterprets the prior art, tell the PTAB that the examiner is wrong. If there is absolutely no evidence supporting the examiner’s position, call this out.

Examiners will not hold it against you. I have talked to several patent attorneys over the years who have suggested that it is not worth harming the relationship with an examiner they will have to deal with for years. This is not the case in my experience. I have aggressively appealed examiners with whom I continue to have fantastic working relationships. You might disagree with an examiner on specific issues, but the examiner will understand that you are acting in the best interest of your client, and it is not personal. I have even had an examiner call me up a few weeks after completely shredding his logic on appeal and say, “I really liked the arguments in your brief and will allow the case; I just have some minor changes.”  If you are attacking the examiner’s work product, and not the examiner personally, this should not be an issue.

5. Always file a Reply Brief reiterating your strongest arguments.

As noted above, you should always file a Reply Brief in response to the Examiner’s Answer. If not, you are giving the examiner the last word. Having the last word helps you win an argument, and you are appealing to win an argument. In the Examiner’s Answer, there is a Response to Arguments section addressing the arguments made by the applicant in the Appeal Brief. You should address all of the examiner’s relevant arguments in your Reply Brief, reiterating your strongest arguments and supplementing your strong arguments with further arguments that address any new arguments by the examiner. I have found it helpful to follow a three-step process in the Reply. First, I summarize the argument from the Appeal Brief. Second, I quote the examiner’s reply from the Response to Arguments section. Third, I aggressively respond to the argument. This helps to frame each argument in a way that minimizes the chances that the PTAB will misinterpret your arguments in the Reply Brief. It also reinforces that you disagree with the examiner’s position. You do not want to give the PTAB the impression that you might be giving up and conceding that the examiner has the better position.

All of the above techniques have helped me win appeals and will help increase the chances that you will win on appeal.

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Author: gustavofrazao
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