If during patent prosecution an agreement cannot be reached with the patent examiner, the applicant has the option of requesting review by the Patent Trial and Appeal Board (“PTAB”). Moving an application from review by the patent examiner to the PTAB requires payment of multiple fees, and the preparation and filing of an appeal brief.
An appeal brief must rest on the facts introduced during prosecution of the patent application before the examiner, thus the prosecution history is critical.
The appeal brief often includes arguments that are more legal in nature than those made to the patent examiner. The PTAB judges receive more legal training than the examiners, and thus are better suited to make legal holdings, rather than focusing on the technical features of any cited prior art references.
As a result of its experience in federal court litigation and patent prosecution, Larson & Larson is prepared to craft the legal arguments required for your appeal brief.