The USPTO Now Offers Ex Parte Appeal Brief Resources to Help with Proper Drafting

The US Patent and Trademark Office has released new resources for filing an Ex Parte Appeal brief.  An appeal brief may be filed during prosecution of a patent application, on claims that have been rejected twice, or claims that have had a final rejection. By filing an appeal brief, the appellant is asking the Patent Trial and Appeal Board (PTAB) to review the case.  

Appeal briefs are not common in a lot of cases, so pro se inventors or attorneys who have never gotten to this point may be unfamiliar with the process.  The new resources released are targeted at these people and designed to help them draft their first appeal brief to the PTAB. 

What’s Included in the Appeal Brief Resources?

The first resource is a word document template of an appeal brief.  This template is designed to include sections for needed information to help guide the appellant through the process of drafting the brief.  The first page includes a header with boxes for all of the needed identifying information (inventor, application number, examiner, and confirmation date to name a few).  The template continues with headers prompting the appellant for information required to file the appeal.  The template tries to guide an appellant through drafting the appeal by even including sub-headings if different claims have different arguments for why they should be considered patentable.

The second resource is a PDF that helps an appellant through drafting their appeal step by step using the template. The guide describes the type of information that should be included in each section and even provides examples of how to draft those sections.  The guide includes references to the Manual of Patent Examining Procedure (MPEP), so if there are any questions an appellant can go to the source. The PDF explains why these sections are required, what information they provide to the PTAB, and how that can help the appellant’s case.

Appeal Brief Resources Help Provide Guidance for New Appellants

These resources are a valuable jumping off point for anyone that has not filed an appeal brief before.  Whether pro se inventor or attorney, these resources can give an appellant a leg up to providing the PTAB with a brief that is set up to most efficiently present their arguments. 

Link to resources: 

https://www.uspto.gov/patents/patent-trial-and-appeal-board/resources/preparing-ex-parte-appeal-brief?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term= 

Key Takeaways on the USPTO’s New Ex Parte Appeal Brief Resources

The USPTO put together a set of tools to help inventors and attorneys properly draft and file an ex parte appeal brief with the PTAB by providing:

1. A template with headers and boxes for all information that must be included in the brief;

2. A step-by-step guide for how to draft each section of the brief; and

3. References to the MPEP for easy access to procedure rules.

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