Google Ruling Yields Patent Prosecution Appeal Prep Lessons

Law360 (December 7, 2020, 4:45 PM EST) -- While appeals to the U.S. Court of Appeals for the Federal Circuit during patent prosecution are less common than appeals from a district court or from the Patent Trial and Appeal Board in contested cases, e.g., inter partes reviews, there are significant benefits for a patent applicant when the Federal Circuit reverses the PTAB's claim rejections.

Under the U.S. Patent and Trademark Office's procedures, a successful appeal to the Federal Circuit does not merely iteratively advance prosecution past the appealed rejection. Instead, reversing the claim rejections almost always terminates prosecution and results in allowance of the appealed claims.[1]

Appeals to the...

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