In 2023, the U.S. Patent and Trademark Office (USPTO) established the Appeals Review Panel (ARP) to review decisions in an ex parte appeal, reexamination appeal, or reissue appeal. However, the panel was not convened until March 2025, when it reviewed a case involving the hot topic of the patentability of antibodies. This unique procedure sheds some light on how the panel may be used in cases going forward.

Panitch Schwarze attorneys Travis W. Bliss, Ph.D. and Ava E. Lutz authored an article in The Legal Intelligencer examining the implications. Two claims in this case were rejected by the USPTO for lack of written description and for two different obviousness-type double patenting issues. The appellant then filed an appeal with the Patent Trial and Appeal Board, and the board rejected the appeal on new grounds. The appellant then filed a notice of appeal to the U.S. Court of Appeals for the Federal Circuit, and in a precedent-setting move, the USTPO director remanded the case to the ARP due to the “novel questions” it raised. The panel maintained the rejection, but it upheld lack of written description as the only valid rationale.

The way this case played out indicates that the ARP may be convened when it comes to contentious issues. The panel also gives the USPTO the power to provide additional support or change the reasoning behind rejections mid-appeal. Patent applicants should be wary of this potential disadvantage as they navigate the application process.

Read the full article here: USPTO Has a New Avenue for Adjusting Arguments and Grounds for Rejection Mid-Appeal: The Appeals Review Panel (Subscription is required.)