Ex Parte appeals lawyer, Brief and Judgement procedure

What are Ex parte appeals?

If a patent examiner rejects a patent application twice or issues a final rejection, the applicant may request that the Board review the rejection. The Board shall designate such an applicant as an appellant. 

The appellant and the examiner may file written papers called briefs, to explain their respective positions. A brief on appeal contains certain required information to help the Board understand the invention and the arguments for patentability. To assist in preparing an appeal brief, the Board provides a template appeal letter and instructions for appellants on the Preparing an Ex parte appeals brief webpage.

In addition, the appellant may also request an oral hearing before the Board, known as an oral hearing.

The Board will review the briefs, attend the oral hearing, and then issue a written decision. The Board will either affirm the examiner's denial or reverse it in whole or in part. If the appellant is unsuccessful in obtaining a reversal of the Board's denial of the examiner, the appellant may seek reconsideration by the Board or review by a federal district court, or both, and appeal the Board's decision to the U.S. Court of Appeals for the Federal Circuit.

Ex Parte Appeals Lawyer

An examining attorney's decision may be appealed to the Trademark Trial and Appeal Board (PTAB). An examiner who denies registration issues an Office Action. The Office Action will detail any requirements and/or denials that prevent registration of the application. For the matter to be appealed, the denial must be "final" and the requirement must be a "substantive" matter and not a technical matter. Typically, petitions to the Director relate to technical matters.

A frequently asked question in our practice is, "What is a final denial?" This is either an Office Action marked "Final Rejection," or a second rejection for the same reasons as the first rejection, or a repeated requirement. If an appeal is taken after a final denial, the applicant’s ex parte appeals lawyer should file a notice of appeal and pay the appeal fee within six months of the final denial. Failure to timely file the notice of appeal and fee with the Board will result in the trademark application being deemed abandoned. However, if the failure to file the notice of appeal is inadvertent, the applicant may file a petition to reopen the case. It should be noted that a petition to reopen cannot be filed if the applicant filed a motion for reconsideration and it was denied and the applicant then failed to timely file a notice of appeal.

Once the Examining attorney issues a final notice of denial, the applicant may file a motion for reconsideration with the Examining Attorney in addition to filing a Notice of Appeal. A motion for reconsideration must also be filed within six months of the final notice of denial issuance. A request for reconsideration may include additional evidence, new arguments, and/or amendments to the trademark application. It should be noted that filing a request for reconsideration does not change the statutory time limit for filing an appeal (it must still be filed within six months from the date of the final refusal).

In most cases, the evidence in an ex parte appeal is submitted by an ex parte appeals lawyer during the prosecution of the trademark application. However, if the applicant or examiner wishes to introduce additional evidence after the appeal is filed, the party must request that the Board suspend the appeal and remand the application for consideration of additional evidence. The Board will generally grant this request only if good cause is shown.

Applicant's brief on appeal must be filed within 60 days of the filing of the notice of appeal. Once filed, the appellant's brief is forwarded to the examining attorney. The examiner has 60 days from receipt of the appellant's brief to file his or her brief. Finally, the appellant has 20 days from the date the examiner's brief is mailed to file a reply brief. In order for an oral hearing to be ordered, the appellant must request one. This request must be filed no later than 10 days after the due date of the appellant's reply brief.

The Board shall issue a written decision on the appeal based on the evidence before it, the arguments of the appellant, and the arguments of the examining attorney. If either party is dissatisfied with the decision, he or she may request a new hearing, reconsideration, or modification of the decision. If the party is still dissatisfied, it may either appeal the Board's decision to the United States Court of Appeals for the Federal Circuit or seek review of the Board's decision by filing a civil action in the United States District Court.

Preparing an ex parte appeal brief

If you are an independent inventor who wants to appeal a patent examiner's rejection of your claims without the assistance of an attorney, you have come to the right place.

If any of the claims in a patent application have been twice rejected or finally rejected by a patent examiner, you may seek review as an appellant before the Patent and Trial Appeal Board (PTAB).

The appellant and the examiner may file written materials, called "briefs," to explain their respective positions. The process begins with an appellant filing a "notice of appeal," followed by an appellant's "notice of appeal brief" The examiner typically responds with an "answer" addressing the appellant's arguments in the "notice of appeal brief" The appellant may, but is not required to, subsequently file an "answer brief" to address the "answer"

Once the brief is complete, your appeal will be considered by a panel of three patent administrative patent judges of the Board. The panel reviews the briefs and renders a decision either sustaining ("affirming") or not sustaining ("reversing") the Examiner's denial in whole or in part.

Ex Parte Judgement

At the full hearing, appellant and the examiner will present evidence in the form of testimony and other documents you may have, such as photographs, hospital records, and police reports.

The defendant may appeal the ex parte order. The judge must decide whether to issue a permanent order to replace the ex parte order. If the judge does not think the defendant needs a permanent order, the judge will deny the petition and lift or vacate the ex parte restraining order.

If the defendant does not appear at the hearing, the judge will vacate the order. If the respondent does not appear, it is likely that you will get a permanent order that will last for about a year. 

If the respondent appears and does not object, the ex parte order is converted to a permanent order without testimony. If the respondent appears and objects to the injunction, a hearing will occur. Defendant and the respondent will each testify and present evidence. Then the judge will decide if you need a permanent order or if the petition should be dismissed.