Celebrating the 10th Anniversary of the USPTO Pre-Appeal Brief Conference Pilot Program

For over ten years, applicants have taken advantage of the Pre-Appeal Brief Conference Pilot Program introduced by the United States Patent and Trademark Office (“USPTO”) on July 12, 2005. As discussed below, clever applicants can use the pre-appeal brief conference pilot program (hereinafter “the pilot program”) to help reduce pendency and unnecessary prosecution expenses.

The Typical Patent Appeal Timeline

Every applicant whose claims have received multiple rejections has the opportunity to appeal an application to the Patent Trial and Appeal Board (“PTAB”). Typically, the applicant initiates the appeal by filing a notice of appeal that provides a limited period of time to prepare a detailed appeal brief. Once the appeal brief is filed, the examiner must convene with a panel of examiners to formally review the merits of the outstanding rejections prior to issuing an examiner’s answer in response to the appeal brief. The panel of examiners includes at least the examiner of record and a supervisory patent examiner who frequently decide to reopen prosecution or even allow the application during the panel review.

The panel review helps reduce the backlog of appeals at the PTAB since only appeal briefs approved by the panel can be forwarded to the PTAB for review. However, the timing of the panel review can have drawbacks. Indeed, it can be inefficient to undergo the time and expense of preparing an appeal brief only to have the examiner reopen prosecution or issue the application based on the panel review. Furthermore, an applicant may even decide to abandon an application with improperly rejected claims rather than preparing an expensive appeal brief.

The Benefits of the Pre-Appeal Brief Conference Pilot Program

The Pre-Appeal Brief Conference Pilot Program allows applicants to file a request with the notice of appeal to have the panel review conducted prior to preparing and filing the appeal brief. After the panel review, the examiner issues a communication indicating the decision of the panel. The panel may decide to maintain the rejection, reopen prosecution or allow the application. Savvy applicants may enjoy a range of benefits from the pilot program. For instance, the panel of examiners may decide to reopen prosecution or issue the application without undergoing the time and expense of preparing a detailed appeal brief.

In another example, the relatively inexpensive pilot program may be used to avoid further narrowing claim amendments in an effort to achieve a favorable response from the USPTO. Indeed, the panel may reopen prosecution or even allow the application without unnecessarily narrowing the claims with a Request for Continued Examination (“RCE”). Furthermore, even if the panel maintains the rejection, the applicant still has the option of filing an amendment to the claims together with an RCE to expedite allowance. The applicant may then decide to file a continuation application to further pursue the broader claim set at the PTAB.

In still another example, the pilot program may be used by applicants as a last effort to obtain allowance of the application. Indeed, while the claims may be rejected in error, applicants may not wish to incur the expense of preparing the appeal brief. Rather, the applicant may decide to use the relatively inexpensive pilot program as a last effort to obtain allowance before abandoning the application.

Applicants wishing to efficiently prosecute patents before the USPTO should seek a patent attorney who is familiar with the pre-appeal brief conference pilot program and other pilot programs and techniques that can reduce pendency and unnecessary prosecution expenses.

Wentsler devotes a significant amount of its practice preparing and filing patent applications and prosecuting patents before the USPTO. Please contact us if you would like further information.

Categories: Patent Law Updates

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