Improving the Success of Appeals to the Patent Trial and Appeal Board (Live Webinar)

Currently patent applicants are successful in reversing the final rejection of some or all pending application claims in about 50% of all decided appeals. This seminar will provide you with tools that will help you improve your appeal success by allowing you to: (1) better evaluate the merits of appealing a final rejection; (2) better position patent applications for an appeal; and (3) draft effective Appeal Briefs. The topics covered will include:

  • When is an application ripe for Appeal?

    • The RCE vs. appeal debate
    • Timing of the appeal

  • Readying applications for appeal

    • Reducing appealable issues
    • The rejection vs. objection dichotomy
    • Getting evidence into the record for appeal

  • Notice of Appeal and Pre-Appeal Review

    • Pre-Appeal Brief filing pros and cons
    • Pre-Appeal statistics
    • When to file a Pre-Appeal Brief

  • The Appeal Brief

    • The Appeal Brief format
    • Drafting hints
    • Amending the application during briefing

  • The Examiner’s Answer and applicant’s Reply Brief

    • Evaluating the examiner’s Answer
    • Drafting a forceful Reply Brief

  • The PTAB Decision

    • Possible Outcomes
    • Post appeal prosecution options


Presenter: MBHB Partner Blair Hughes

While there is no fee to participate, all attendees must register in advance and, in order to receive MCLE credit, must participate individually. Access an archived audio version of this webinar here. NOTE: MCLE credit is not available for this archived recording.

All registrants will receive an email confirmation and details for online participation. MCLE credit is pending for the states of California, Georgia, Illinois, North Carolina, New Jersey, New York and Virginia.

McDonnell Boehnen Hulbert & Berghoff LLP is committed to educating clients and friends of the firm with respect to significant developments and trends in the areas of intellectual property law.