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You’ve received a final rejection from the USPTO. It’s frustrating—and often feels like a dead end. But there’s still a way forward. A well-prepared appeal, especially one supported by strong technical testimony, can turn things around.
Appeals give you a chance to clarify your invention, challenge how the examiner applied the law, and bring in supporting voices who can explain what makes your invention truly different. That’s where testimony from a qualified technical source can add real value. It can give your application the support it needs to move closer to approval.
Understanding the Role of Testimony in a Patent Appeal
Most patent appeals are filed after a final office action or when prosecution has reached a standstill. The appeal is your chance to challenge rejections by making legal and factual arguments before the Patent Trial and Appeal Board (PTAB) or, in some cases, a federal court.
In some situations, you’re allowed to introduce new evidence—especially if it helps address specific issues raised during the examination. A declaration from a technical professional, for example, might explain how the invention works in the real world, how it differs from prior art, or why it wouldn’t have been obvious to someone in the field.
These statements can fill in the gaps that written arguments alone might leave behind. They don’t just state opinions—they help show, step by step, why the invention works and why the rejection is off base.
What Makes a Strong Witness Statement?
Not all testimony carries the same weight. A strong statement should be clear, detailed, and grounded in technical understanding. The goal is to explain—not promote—the invention.
Effective testimony might include:
- A side-by-side explanation of how the invention differs from the cited prior art
- A discussion of why the claimed features solve a particular problem in a new way
- Clarification of technical terms or processes that may have been misunderstood during examination
One of the most common tools is a declaration under 37 CFR § 1.132, which can be used during prosecution or in support of an appeal. This type of declaration gives you a formal way to introduce facts that rebut or clarify the examiner’s reasoning.
For instance, if the examiner rejected your invention for being obvious, a technical witness could point out why the proposed combination of references wouldn’t work in practice—or why no one would have thought to combine them in the first place.
In short, a strong statement supports your case by explaining—not just asserting—why your invention matters.
When and How to Present Testimony During Appeal
Timing is important. If you’re appealing to the PTAB, it’s possible to submit a declaration while prosecution is still open—before the Notice of Appeal is filed. That gives you a better chance of getting it considered.
If the case is already on appeal, introducing new evidence becomes harder. That’s why planning ahead matters. Getting a clear technical statement into the record early can save time and improve your odds later.
Testimony can be useful in a range of appeal stages:
- During a response to a final office action
- In a request for continued examination (RCE)
- As part of the appeal brief, when rules allow
- During litigation, if the appeal reaches the Federal Circuit
For example, if the examiner claims that your invention is just a predictable tweak on two known technologies, a technical witness can break down why those references couldn’t have been combined successfully—or why the result wouldn’t work as the examiner suggests. On the flip side, weak or unsupported declarations can hurt your appeal. That’s why strategy and preparation matter just as much as the content itself.
How We Can Help Build the Strongest Record
At Gearhart Law, we work closely with engineers, scientists, and inventors to build appeal records that hold up under scrutiny. If we think a technical statement will help your case, we’ll connect you with someone who not only understands the subject matter but can explain it clearly and persuasively.
We’ll help shape the declaration so it fits your appeal strategy. That includes reviewing how it aligns with the prior art, the arguments on record, and the examiner’s reasoning. Our goal is to make sure every submission works together to support your position. We’ll help you decide whether testimony makes sense for your appeal—and if so, how to use it to your advantage.
Strong Support Can Tip the Scales
If your patent has been rejected, don’t assume it’s the end of the road. A clear, technical explanation of your invention can change the direction of your case. When done right, it can highlight what the examiner missed—and give your appeal the support it needs. Reach out to Gearhart Law to discuss your patent appeal. We’re here to help you build a record that stands out—and move your application forward with confidence.