Sunday, March 18, 2007

2005 New Pre-Appeal Brief Conference

In June 2005, the U.S. Patent and Trademark Office published a notice announcing a new pre-appeal brief conference pilot program. The announcement appeared on the web site of the U.S. Patent and Trademark Office, then was published in the Official Gazette of July 12, 2005.

The rule change notice can be found here:

The procedure was effective upon publication of the notice. The stated purpose of the program was to offer applicants an avenue to request that a panel of examiners formally review the legal and factual basis of the rejections in their application prior to the filing of an appeal brief.

This program offers applicants an opportunity to request a review employing an appeal conference, prior to the filing of an appeal brief. During a panel review, a panel of examiners (including the examiner of record) considers the merits of each ground of rejection for which appeal has been requested and issues a written decision as to the status of the application.

To request the procedure, an applicant must file a request for patent review along with the filing of a notice of appeal and before the filing of an appeal brief. In five (5) or less total pages, applicants are to provide a succinct, concise and focused set of arguments for which the review is being requested. No after-final or proposed amendments may accompany the request. The request should specify clear errors in the examiner's rejections; or the examiner's omissions of one or more essential elements needed for a prima facie rejection. Requests are limited to appealable, not petitionable matters.

Upon receipt of a properly filed request, a Technology Center Art Unit supervisor is to designate a panel of examiners experienced in the field of technology to review the applicant's remarks and the examiner's rejections. The panel will include at least a supervisor and the examiner of record. The applicant will not be permitted to attend the review and no interviews will be granted prior to issuance of the panel's decision.

The Office should mail a decision within 45 days of receipt of a properly filed request.

After the review is complete, the Office will mail a decision on the status of the application. The decision will state one of the following:

-Finding 1: The application remains under appeal because there is at least one actual issue for appeal.
-Finding 2: Prosecution on the merits is reopened and an appropriate Office communication will follow in due course. In appropriate circumstances, a proposed amendment may accompany the panel's decision proposing changes that, if accepted, may result in an indication of allowability for the contested claim(s).
-Finding 3: The application is allowed on the existing claims and prosecution remains closed.
-Finding 4: The request fails to comply with the submission requirements and is dismissed.

The decision will summarize the status of the pending claims (still rejected, withdrawn rejections, objected to or allowable claims).

A decision by a pre-appeal brief conference panel to withdraw the rejections of any or all of the claims on appeal is not a decision by a panel of the Board of Patent Appeals and Interferences, and, as such, would not result in any patent term extension.

The decision will not contain any additional grounds of rejection or any restatement of previously made rejections. Such matters will be addressed, as appropriate, in the Examiner's Answer.

The time period for filing an appeal brief will be reset to be one month from mailing of the decision on the request, or the balance of the two-month time period running from the receipt of the notice of appeal, whichever is greater.

I have had mixed results with this procedure. In my experience, the panel has consisted of the examiner, his supervisor, and one other examiner. This often means that two out of three people are already disposed towards supporting the rejection. Sometimes, I would receive a short decision saying the case should proceed to appeal and would then have a short one month period to prepare the Appeal Brief. Other times, prosecution would be reopened with a different rejection. But sometimes the procedure would result in an allowance.