Ex Parte Patent Appeals: Determining Whether to Appeal, Trends and Lessons From Recent Cases

NOTE: A PTAB judge has been added to the panel.

This CLE webinar will guide patent counsel on ex parte appeals. The panel will discuss the strategy of choosing ex parte appeals and key considerations. The panel will also offer best practices for ex parte appeals.

A decision to pursue an ex parte appeal at the USPTO provides an opportunity for patent counsel to aggressively argue the patentability case before the Patent Trial and Appeal Board (PTAB) and change audience making decisions. Patent counsel should weigh factors, including time, cost, and statistics on appeal, when determining whether to pursue an ex parte appeal.

Multiple types of statistics can inform an appeal decision. It can be advantageous to examine statistics pertaining to the PTAB, the examiner, and the art unit. Statistics can even be broken down by rejection time to better relate to an applicant's specific circumstance.

Understanding patent term adjustment ramifications of a Board decision and various strategies that may be used during the appeal process (e.g., Pre-Appeal Brief Conference, Oral Hearing, expediting an appeal) is also important.

Listen as our authoritative panel of patent attorneys examines ex parte patent appeals. The panel will discuss the strategy of choosing ex parte appeals. The panel will examine recent cases and the lessons learned from those decisions. The panel will also offer best practices for ex parte appeals.