The Traditional Road to Appeal –

If the claims in your patent application have been rejected twice, there are several options at your disposal, one of which is to go through the Appeal process¹.  The Appeal process can be fairly costly and time consuming, involving the preparation of an Appeal Brief and subsequent review by the Patent Trial and Appeal Board (PTAB).  Often an Applicant will instead file a Request for Continued Examination to keep the application with the Examiner in the interest of reduced cost and time.  This approach can be productive, but can also result in the repetition of the same or similar rejections depending on the positions that the Examiner and the Applicant take.  An Appeal hearing often brings closure to a “stalemate” situation, but can be an expensive process that not always results in the desired outcome.

The Pre-Appeal Road by the Apple Orchard

To address these concerns, the USPTO has been offering a Pre-Appeal Brief Conference Pilot Program where a panel of Examiners will review the Examiner’s rejections prior to the filing of an Appeal Brief to determine if the application is in fact in condition for Appeal, or if errors have been made by the Examiner that have resulted in improper rejections. Thus, the Pre-Appeal Brief Program is not for every situation, but only those where the Applicant believes that the Examiner has made an error.  It is not intended to be another opportunity to argue against cited references and amend claims.  In fact, the Pre-Appeal Brief cannot contain claim amendments.  Still, it offers another bite at the apple on the road to a hopeful allowance of your patent application.

Timing

In the normal appeals process, a Notice of Appeal is filed with the appropriate fee and then an Appeal Brief is filed within two months of the filing of the Notice of Appeal. Should an Applicant wish to use the Pre-Appeal Brief Conference Pilot Program, a Pre-Appeal Brief is filed with the Notice of Appeal. If the Pre-Appeal Request is determined to be proper, a panel that includes the Examiner of Record, a Supervisory Examiner and another Examiner will review the Pre-Appeal Brief.  This review conference is not open to participation by the Applicant or the Applicant’s Agent, and will result in one of several outcomes.  Either the application will be allowed, prosecution will be reopened, or the Appeal will proceed to the PTAB with the appropriate Appeal Brief.

Requirements

To use the Pre-Appeal Brief Conference Pilot Program, A Pre-Appeal Request must also include a Pre-Appeal Brief, which is limited to five pages, and must be filed with the Notice of Appeal and related fees. No claim amendments can be included in the Pre-Appeal Brief.  This five page limitation is often challenging, and requires that the Brief be extremely focused and persuasively point out where the Examiner has made improper rejections.

 Results

Of course the desired result of using this program would be a Notice of Allowance without the need for filing an Appeal Brief and going before the PTAB. Short of that, reopening prosecution would also indicate the Examiner’s willingness to work the issues of the case in the hopes of achieving at least some allowable claims through amendments. Either of these would be reasonable outcomes.  If the outcome is instead just an indication that the application should proceed through the normal Appeal process, the Pre-Appeal Brief can be used as a basis for the Appeal Brief itself, so all is not lost.  What will remain an unknown is how an unfavorable decision of the Pre-Appeal Brief Conference may impact the future decision of the PTAB.  Given that the Pre-Appeal Brief Conference panel includes the Examiner of Record and the PTAB does not, one should carefully consider past interactions with the Examiner of Record in determining if the Pre-Appeal Brief Conference Pilot Program should be used, or if going straight to the PTAB will be more effective. While the Pre-Appeal Brief offers the possibility of eliminating the need for an Appeal Brief and related hearing, it can also create more file history that may weaken your patent position either in any future litigation or in subsequent Appeal proceedings.

1. See The Limited Monopoly, February 2011.

GRAPHIC CREDIT:  “Apple in Home Orchard”.  Robert Gunderman.

Authors Robert D. Gunderman P.E. (Patent Technologies, LLC www.patentechnologies.com) and John M. Hammond P.E. (Patent Innovations, LLC www.patent-innovations.com) are both registered patent agents and licensed professional engineers.  Copyright 2016 Robert Gunderman, Jr. and John Hammond

Note: This short article is intended only to provide cursory background information, and is not intended to be legal advice.  No client relationship with the authors is in any way established by this article.