When patent applicants file their opening briefs during PTAB appeals challenging disallowance of their patent applications, there is a substantial chance–more than one in three–that the pertinent Technology Center will concede all issues.
Pursuant to MPEP § 1207.01, once a PTAB appellant files a main brief, the pertinent Technology Center is required to hold a 3-employee conference on whether to maintain the pending appeal or concede some or all of the appeal-issues. The Technology Center Conference consists of the current examiner, a supervisory patent examiner and another experienced examiner.
A strong opening brief in a PTAB appeal can accelerate a successful outcome in the appeal. Because of the built-in review process, a strong PTAB appellant main brief can quickly lead to favorable results for the inventor. From October 1, 2021 through January 31, 2022, MPEP § 1207.01 Technology Center Conferences shut down 35% of PTAB Appeals. In other words, only 65% of PTAB appellant main briefs were answered by the examiner. In the other 35% of the cases, Technology Centers removed all appeal-issues once the main brief was filed.
Please contact Joe Piccolo at DBJG with any questions concerning PTAB appeals.