Appeals to the PTAB (Patent Trial and Appeal Board)

The Patent Trial and Appeal Board (“PTAB”) is created by statute, and includes statutory members and Administrative Patent Judges.  The PTAB is charged with rendering decisions on:  written appeals from adverse examiner decisions, review of appeals of reexaminations, derivation proceedings, inter partes and post-grant reviews, and interferences.

An appeal can be initiated before the PTAB from an adverse decision of an examiner in various proceedings before the PTO. The first step of the appeal process is to file a notice of appeal, along with a filing fee.

The next step is to file an appeal brief within two months of the filing of the notice of appeal. Once the appeal brief is forwarded to the patent examiner who issued the final rejection from which appeal is taken, the patent examiner has a few options. First, the examiner can reopen prosecution to enter a new ground of rejection. Second, the examiner can withdraw the final rejection and allow the claims of the patent application. Third, the examiner can maintain the rejections and file an answer to the appeal to PTAB.  In this case, the examiner has to file the answer within two months after the appeal brief is filed. Within two months of the answer, the patent applicant has to respond with a reply brief. At this point, the applicant may request for oral hearing. Thereafter, the PTAB makes a decision on the appeal. An oral hearing would be conducted if it has been requested.

An overview of the appeal process is shown in the diagram below. If you have a question about an appeal before the PTAB, please feel free to reach out to us via telephone or email. You may also fill out our online inquiry form and we will strive to get back to you within 24 hours.

Appeals General Process Infographic