Oblon, Spivak’s Board of Patent Appeals and Interferences (BPAI) practice group is made up of experienced and dedicated professionals with unmatched experience and expertise in handling appeals before the Board of Patent Appeals and Interferences (the Board). The group’s members are involved in all aspects of appeals in a wide range of technology areas. In 2009, Oblon, Spivak attorneys filed more than 220 appeal briefs and conducted over 65 oral hearings before the Board.

Cases taken to the Board require special handling and special treatment because there is a new decision maker, a panel of Administrative Patent Judges (APJs).  The application has already reached an impasse with the Examiner, and now unless the APJs are convinced the final rejection was in error, the Board will affirm the rejection. If the APJs are not persuaded that the Examiner erred, applicants must either refile the application with amended claims and face an emboldened Examiner, or make a significant investment by further appealing the adverse decision at the Court of Appeal for the Federal Circuit (CAFC). Clearly, the best strategy is to prepare the application for review in the best possible light by the Board, and no one is better equipped to do this than our BPAI practice group. 

Our Services

• Prosecution from highly complex technologies through Board of Appeals proceedings
• Accept transferred cases that are in need of special treatment to be put in best condition for review on Appeal
• Provide assistance to less experienced practitioners when at the appeal stage
• Provide strategic counseling regarding appeal issues
• Offer mock oral hearing in our Moot Courtroom with former APJs offering feedback and suggestions
• Handles unsuccessful Board of Appeals proceedings on further appeal to the Federal Circuit

Oblon, Spivak’s expertise can be tapped from an initial stage of preparing an application all the way through a Board of Appeals proceeding, and further through a subsequent appeal to the Federal Circuit. We are located within the United States Patent and Trademark Office (USPTO) complex and hold personal meetings with USPTO personnel every day.

One of the strengths Oblon, Spivak brings to handling an appeal before the Board is an unmatched depth and variety of experience by putting together dedicated professionals with deep experience at the USPTO, both as APJs and as administrators at the Board, with practicing attorneys with strong technical backgrounds and extensive practical client experience. Oblon, Spivak can provide a complete package to handling any case in front of the Board. With Lee E. Barrett, Teddy Gron, and Harris Pitlick, Oblon, Spivak has professionals who have handled over 160 appeals from the Board to the Federal Circuit. Please see additional information on our world-class team.

For further information about the Board of Patent Appeals and Interferences, please see our Frequently Asked Questions section or our BPAI Resources page.