Patent Applicant's PTAB Reply Brief

Summary

This template is for a reply brief to an Examiner's Answer in the appeal of a patent examiner's rejection to the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). This template includes practical guidance and drafting notes. 37 C.F.R. § 41.41(a)(1) gives the appellant the right to file a reply brief within two months from the mailing date of the Examiner's Answer. An extension of time to file the reply brief may be granted under 37 C.F.R. § 1.136(b). The request for an extension of time must state the reasons for requesting the extension and identify a reasonable extension period. Use USPTO Form SB/23 to request the extension. The filing of a reply brief is optional unless Examiner's Answer includes new grounds for rejection. As noted by the PTAB in Practice Tips for Writing Effective Appeal Briefs, you should use a reply brief only to respond to points raised in the Examiner's Answer. Do not reiterate the arguments presented in your appeal brief. Use the reply brief to reply to specific findings made or positions taken by the examiner in the Examiner's Answer, or address intervening case law relevant to appeal issues. Do not raise new arguments in a reply brief that are not responsive to arguments made in the Examiner's Answer. Also, do not separately argue claims for the first time in a reply brief. For more information on reply briefs, see MPEP § 1208. The fee for forwarding the appeal to the PTAB should be paid within two months of the mailing date of the Examiner's Answer. It is typically paid with the reply brief or, if there is no reply brief, then it is the next step in the appeal process following the Examiner's Answer. See here for the USPTO's schedule. The form for certification and transmittal of the appeal forwarding fee is USPTO Form AIA/34. Tailor this template to respond to the specific rejection(s) being appealed in your case, including any new grounds of rejection found in the Examiner's Answer. Remember that your reply brief will form part of the intrinsic record that may later become important in patent enforcement and validity proceedings. For example, courts may consult reply briefs to help construe claim limitations and evaluate whether the appellant disclaimed particular claim scope during the appeal. Make sure that your reply brief does not contain any unnecessary admissions that would limit claim scope. Also, avoid unnecessary characterizations of the invention. Stick to the claim language when referring to the invention and, preferably, refer to the "presently claimed subject matter" rather than "the present invention," whenever possible. See, e.g., Chewy, Inc. v. IBM, 94 F.4th 1354, 1359–60 (Fed. Cir. 2024); Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007). It is important that your reply brief is correctly filed and displayed in the file history. You should, therefore, include the following caption in a header on each page of your reply brief: Application No. [application number] || Attorney Docket No. [attorney docket number] Reply Brief under 37 C.F.R. §41.41 Each page should also be numbered to ensure that every page has been properly filed and to facilitate reference to a particular page in later prosecution, if necessary. For more information on the appeals process and the USPTO's pilot programs for appeals, see PTAB Appeals from Patent Application Rejections.