Patent Trial and Appeal Board (PTAB)

Oblon Spivak’s Patent Trial and Appeal Board (PTAB) practice group is made up of experienced and dedicated professionals with unmatched experience and expertise in handling appeals before the Patent Trial and Appeal Board (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 PTAB 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 Patent Trial and Appeal Board, please see our Frequently Asked Questions section or our PTAB Resources page.

Friday, July 27, 2012

In Ex Parte Ransquin, the Board reversed the Examiner’s obviousness rejection noting that the Examiner’s “continued reference” in his Answer to what the prior art discloses, evidenced “a fundamental misunderstanding by the Examiner of the difference between what references teach or disclose and what a proposed combination of references...

Monday, July 23, 2012

In Ex parte Potts (Case No. 2011-004700, in Application Serial No. 11/690,745, decision issued July 17, 2012), the Board rejected as unpatentable subject matter a claimed method for predicting the outcome of a clinical treatment based on measured correlations between treatments and responses, because the claims at issue sought only to...

Thursday, July 12, 2012

In Ex parte Treacy et al. (Appeal 2011-008520; Application serial no.

Thursday, July 12, 2012

In a recent decision, Ex parte Kleinwaechter (Appeal No. 2011-009329, Serial No.

Thursday, June 21, 2012

It is firmly rooted that because an apparatus is a structure, an apparatus must be distinguished from prior art on the basis of its structure, and where a prior art structure is inherently “capable of” performing the claimed function of the apparatus, the burden shifts to the applicant to show that the claimed function...

Friday, May 25, 2012

In Ex Parte Nakhamkin, the Board reversed the examiner’s obviousness rejection as relying solely on a per se rule of obviousness. Ex Parte Nakhamkin, No. 2012-003291 (B.P.A.I. May 23, 2012). The Board emphasized that “when determining whether a claim is obvious, an Examiner must make ‘a searching comparison of the...

Wednesday, May 23, 2012

A recent Board of Patent Appeals and Interferences (BPAI) decision, Ex parte CHARLES J. COHEN et al. (Appeal 2010-009167, in application serial no.

Wednesday, May 16, 2012

In Ex parte Babcock (Case No. 2011-011726, in Application Serial No. 10/636,834, decision issued May 9, 2012), the Board reversed the Office’s rejections under 35 U.S.C.

Friday, May 11, 2012

The appeal process during patent prosecution can be long and expensive.  According to U.S. Patent and Trademark Office statistics, the average pendency of an appeal is over 30 months.  Given this substantial time delay, and the expense associated with the appeal process, it is critical that claims in an application be in condition...