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

Recording of a 90-minute premium CLE video webinar with Q&A


Conducted on Tuesday, June 29, 2021

Recorded event now available

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Course Materials

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.

Description

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.

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Outline

  1. Considerations when deciding to pursue an ex parte appeal
  2. Overview of examiner level data relevant to ex parte appeals and issue-level trends in decisions by the Board
  3. Patent term adjustment implications of Board decisions
  4. Best practices

Benefits

The panel will review these and other important issues:

  • What are the key considerations to factor in when determining whether to pursue an ex parte appeal?
  • What guidance can practitioners glean from recent issue-level data and examiner-level data in ex parte appeals?
  • What best practices should patent counsel employ when conducting an ex parte appeal to negotiate with an examiner?

Faculty

Guest, Rae Lynn
Honorable Rae Lynn Guest

Administrative Patent Judge
U.S. Patent and Trademark Office – Patent Trial and Appeal Board

Judge Guest was appointed as an Administrative Patent Judge in April 2011. She first joined the Board in February 2008...  |  Read More

Bejin, Thomas
Thomas Bejin

Member
Bejin Bieneman

Mr. Bejin concentrates his practice on intellectual property litigation, strategic counseling and freedom to operate...  |  Read More

Stephenson, Adam
Adam Stephenson

Patent Attorney
Adam R. Stephenson

Mr. Stephenson is Chair of the Ex Parte Appeals Subcommittee of the Patent Law Committee of AIPLA, a member of the...  |  Read More

Gaudry, Kate
Kate Gaudry

Partner
Kilpatrick Townsend & Stockton

Ms. Gaudry focuses her practice on data-driven and strategic patent prosecution. She has authored over 60 publications...  |  Read More

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