Step-By-Step Guide: How to File an Appeal with PTAB Successfully


Faced with a patent decision that doesn’t go your way? You’re not out of options yet. Filing an appeal with the Patent Trial and Appeal Board (PTAB) could be your next strategic move. This guide will walk you through the process, ensuring you understand the essentials of how to file an appeal with PTAB. From gathering your documentation to submitting your appeal, we’ve got you covered. Whether you’re a first-timer or looking to refine your approach, this article is your roadmap to exploring the PTAB appeal process confidently. Let’s immerse and turn that decision around.

Understand the PTAB Appeal Process

Filing an appeal with the Patent Trial and Appeal Board (PTAB) can be a strategic move if you’re facing an unfavorable patent decision. It’s crucial to grasp the steps involved in the PTAB appeal process to navigate it efficiently.

First Step: Notice of Appeal

Your journey begins with filing a Notice of Appeal. This document officially informs the United States Patent and Trademark Office (USPTO) that you disagree with the patent examiner’s decision and intend to appeal. There’s a statutorily set time frame for this: you must file your notice within two months from the decision date, although extensions are available for a fee.

Second Step: Appeal Brief

After the Notice of Appeal, your next major task is preparing the Appeal Brief. This critical document outlines your arguments against the examiner’s rejection and provides the legal and factual basis for your case. The brief must adhere to specific formatting and content requirements set by the USPTO. Notably, failure to comply with these guidelines can lead to your appeal being dismissed without review.

Fees and Deadlines

Filing an appeal incurs fees, which vary depending on the entity size. Here’s a brief overview:

Entity Size Appeal Notice Fee Appeal Brief Fee
Large $800 $2,800
Small $400 $1,400
Micro Entity $200 $700

Remember, it’s imperative to keep track of deadlines throughout this process. Missing a deadline can critically impact your appeal.

Oral Hearing (Optional)

After submitting your Appeal Brief, you can request an oral hearing, allowing you to present your case directly to the PTAB judges. While this step is optional, it can be an opportunity to make a compelling personal argument for your patent application.

By understanding these essential steps and preparing meticulously, you position yourself to present a strong case to the PTAB.

Gather Your Documentation

Embarking on the PTAB appeal journey requires meticulous preparation, starting with gathering all necessary documentation. This step is crucial for building a compelling appeal that stands a strong chance of success. Your documentation serves as the foundation of your appeal, illustrating the validity and worth of your patent application. You’ll need to compile a comprehensive set of documents that includes your original patent application, any correspondence with the United States Patent and Trademark Office (USPTO), and detailed records of the examiner’s reasons for rejection.

  • Original Patent Application: This is the starting point of your appeal. Ensure you have a clean, unaltered copy.
  • USPTO Correspondence: Every piece of communication between you and the USPTO needs to be accounted for. This includes the initial rejection and any subsequent discussions or clarifications.
  • Examiner’s Rejection: Pay close attention to the examiner’s rejection letter. It contains crucial insights into why your application was not accepted, which will guide your appeal strategy.

Plus to these critical documents, consider including any new evidence or data that supports your patent’s uniqueness and functionality. Have your legal or patent professional review all documentation to ensure it’s comprehensive and neatly organized. This not only aids in presenting a robust appeal but it also helps in pinpointing the specific areas of contention to address in your Appeal Brief.

Preparing your documentation is not just about gathering papers; it’s about building a strong case. By carefully assembling and reviewing each piece of evidence, you can highlight the strengths of your patent application and address any weaknesses identified by the USPTO. Remember, a well-documented appeal not only makes a compelling case for your patent but also streamlines the appeal process, potentially leading to a more favorable outcome.

Prepare Your Appeal Petition

When you’re ready to challenge a decision made by the USPTO, drafting a compelling appeal petition for the Patent Trial and Appeal Board (PTAB) is your next critical step. This document isn’t just a formality; it’s your opportunity to make a persuasive argument that your invention deserves patent protection. To ensure your appeal petition stands out, rigorous attention to detail and a strategic approach are essential.

First, you must thoroughly understand the PTAB’s appeal process. The PTAB has specific requirements for appeal petitions, including formatting and content guidelines that you must follow to the letter. Start by reviewing the Manual of Patent Examining Procedure (MPEP) and any relevant PTAB resources available on the USPTO website. These resources provide invaluable guidance on structuring your appeal and articulating your arguments effectively.

Next, compile a comprehensive argument that addresses the examiner’s rejection points. Your appeal petition should clearly outline why you believe the examiner’s conclusion was incorrect, supported by legal precedents, technical explanations, and any additional evidence not previously submitted. Highlighting the novelty and non-obviousness of your invention is crucial. Use concise language and avoid unnecessary jargon to make your argument accessible and convincing.

Evidence is your ally. Include new data, experiments, or expert opinions that strengthen your case. If you’ve made modifications to your invention or its application since the initial rejection, detail these changes and explain how they overcome the examiner’s concerns. Remember, every piece of evidence should directly support your argument for patentability.

Filing an appeal petition with the PTAB demands not just a strong legal argument, but a story that convincingly portrays your invention’s worth. By focusing on these steps, you stand a better chance of exploring the appeal process successfully, moving you one step closer to securing your patent rights.

Submit Your Appeal to PTAB

Once you’ve meticulously prepared your appeal petition, submitting your appeal to the Patent Trial and Appeal Board (PTAB) is the next critical step. It’s essential you follow the submission guidelines strictly to avoid unnecessary delays or, worse, your appeal getting dismissed on procedural grounds. Here’s how to proceed effectively.

Firstly, ensure that your appeal brief complies with all PTAB formatting requirements. This includes specific guidelines about the font size, page limits, and margins. The USPTO website provides a checklist that can be immensely helpful in this regard, so make sure to review it thoroughly.

Next, submission of your appeal is done electronically through the Patent Electronic Business Center. If you’re not already familiar with this system, it’s advisable to get acquainted well before your intended submission date. The system requires an authentication process, so setting up your account early on is wise.

Payment of the appeal fee is a prerequisite for the appeal process. As of the latest update, here are the basic fees associated with filing an appeal:

Fee Type Cost (USD)
Notice of Appeal $800
Forwarding Fee $2,240
Appeal Brief Filing Fee No additional
Request for Oral Hearing $1,300

Remember, fees can vary based on the entity size, with small entities eligible for a 50% discount and micro entities a 75% discount.

After submitting your appeal and the required fees, you’ll receive a confirmation. Keep this for your records. It’s a good idea to periodically check the status of your appeal through the Patent Application Information Retrieval system.

Finally, while waiting for a response from PTAB, continue to gather any additional evidence or expert testimony that could reinforce your case. Your readiness to respond promptly and efficiently to PTAB’s inquiries can significantly influence the outcome of your appeal.

Follow Up and Await PTAB Decision

After submitting your appeal to the Patent Trial and Appeal Board (PTAB), the next step is to actively follow up and prepare for the decision. The time it takes for PTAB to make a decision varies, but you’re in it for the long haul. Here’s how to navigate this waiting period effectively.

Firstly, monitor your appeal status regularly. Use the USPTO’s Patent Review Processing System (PRPS) to keep track of your case. This system provides real-time updates and is an invaluable tool to stay informed.

Keep your documentation organized. Throughout this period, you might need to reference your submission or provide additional details. Having your documents neatly filed and accessible can save precious time and avoid unnecessary stress.

Be ready to respond. PTAB may request further evidence or clarification on certain points. Prompt and comprehensive responses can influence the board’s decision positively. Hence, it’s crucial to be prepared to supply any requested information without delay.

Stay in touch with your patent attorney or agent. They can offer valuable advice and insights based on developments in your case. Their expertise could be particularly beneficial if your appeal process involves oral hearings or further submissions.

Remember, patience is key during this phase. PTAB’s decisions are thorough and consider every aspect of your appeal. While waiting, focus on refining your invention or exploring additional patents that may enhance your portfolio.

By following these steps, you’re not just waiting; you’re actively engaging in the process. Your readiness to participate and provide additional information can have a significant impact on the outcome of your appeal.


Filing an appeal with the PTAB is a nuanced process that requires diligence and proactive engagement. By staying informed and organized you’re setting yourself up for the best possible outcome. Remember the importance of monitoring your appeal’s progress and being ready to supply any additional information that may be requested. Working closely with your patent attorney or agent will also play a crucial role in exploring this complex procedure. Above all patience is key as these appeals take time. By adhering to these strategies you’re well on your way to effectively managing your appeal with the PTAB.