Clint Mehall

Every experienced patent attorney knows what is written below is true, but if you want the quiet parts to be spoken loudly, keep reading. This article isn’t revolutionary, but it screams a truth that everyone with an interest in patents needs to understand. Patent invalidation rates by the Patent Trial and Appeal Board (PTAB) are often used to attack the quality of examination by the U.S. Patent and Trademark Office (USPTO). While I agree that there is room for improvement in examination quality, patent invalidation rates should not be used as a barometer for how well the USPTO is examining patent applications.

The first two articles of this series focused on convincing your clients to file more appeals and techniques that you can use to get better results on appeal. This last article discusses case law that you should be arguing in Appeal Briefs. As discussed in my previous article, if you can use case law that the Patent Trial and Appeal Board (PTAB) commonly uses in writing reversal decisions, you make it easier for the PTAB to write a decision in your client’s favor and can increase your chances of winning on appeal.

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.

Stop trying to negotiate with unreasonable patent examiners. It will only hurt your client. Plenty of patent examiners at the U.S. Patent and Trademark Office (USPTO) have standards of patentability that are higher than the average Patent Trial and Appeal Board (PTAB) panel. Strategically filing appeals against these unreasonable examiners will help secure better results for your clients. This is not an article to rant against patent examiners. I respect patent examiners and almost always recommend examiner interviews to try and reach an agreement with the examiner. But if an examiner’s position is unreasonable, ex parte appeals are an effective tool to achieve optimal results for your clients.

Like most patent attorneys, I get multiple emails each month for artificial intelligence tools purporting to help patent attorneys draft patent applications. I have done demos, and I have no doubt that in five years almost all patent drafting practitioners will be using these generative AI tools in some capacity. But I am also convinced that these tools will not be especially helpful in drafting claims.