Fiscal Year 2022 Has Seen Many PTAB Appeal Briefs Go Unanswered By Examiners

DBJG recently obtained PTO data showing that the main briefs filed by PTAB appellants carry the day 35% of the time

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.