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U.S.
Patent Office Announces Pilot Program
for Pre-Appeal Brief Conferences
A
Brand New Opportunity to “Test the Waters” Quickly
Before
Appealing a Final Rejection of a Patent Application to the Board
By Jane
E.R. Potter, Ph.D.
Published by DWT's
Patents Practice Group
[August 2005]
When claims have been rejected twice
in a patent application, the applicant can appeal the Examiner’s
rejections to the Board of Patent Appeals and Interferences.
Before preparing and filing an Appeal Brief, it would be helpful,
however, if the applicant could find out quickly (and at less
expense) just how strong their position is in relation to the
Examiner’s grounds of rejection. A new program at the
U.S. Patent and Trademark Office provides just such an opportunity.
The Patent Office recently began a pilot program which allows
applicants to obtain a Pre-Appeal
Brief Review of the arguments that they would present
in their Appeal Brief.
Standard Appeal Process
After a patent application is filed
in the U. S. Patent and Trademark Office, the patent applicant
may receive an Office Action in which an Examiner has rejected
some or all of the claims of the patent application. The applicant
can file a response to the Office Action, and if the claims
remain rejected on substantive grounds, such as prior art or
lack of enablement, the Examiner will issue another Office Action.
This Office Action may be designated as “Final,”
which limits the options open to the applicant.
Following receipt of the Final Office Action,
one option is to file another response, with the goal of amending
the claims or submitting arguments to put the claims in condition
for allowance. A second option is to file a continuation application
to pursue similar or other subject matter. A third option is
to appeal the Examiner’s decision to the Board of Patent
Appeals and Interferences. (This appeal may also be taken if
the second Office Action is non-final, but the claims have been
rejected twice.) However, the appeal process is likely to involve
the preparation of detailed arguments, and there can be a delay
of months or years before the case is decided by the Board.
Furthermore, the applicant may not have raised all possible
issues during prosecution before the Examiner, and “new”
arguments or evidence cannot by asserted for the first time
in the Appeal Brief.
About the New Pilot Program
The stated goals of the new Pre-Appeal Brief Conference
Pilot Program are (a) to identify clearly improper rejections
based on error(s) of fact, and (b) to identify whether the essential
elements exist to support the rejection. To take advantage of
the program, the applicant must submit a “Pre-Appeal
Brief Request for Review,” using the one-page form
available from the Patent Office (Form
PTO/SB/33), and must submit a “succinct, concise and
focused” set of arguments. The Arguments section must
be five pages or less. The Arguments should
specify the alleged clear errors in the Examiner’s rejections,
or the Examiner’s omissions of one or more essential elements
for a prima facie rejection. Importantly, the Request
and the Arguments must be filed with the Notice of Appeal.
A panel of Examiners experienced in the appropriate
area of technology will review the Arguments and the Examiner’s
rejections. The panel will include the Examiner of record in
the application under consideration. Unlike a full appeal to
the Board, 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 goal of the program is to
mail a copy of the panel’s decision to the applicant within
45 days of receipt of the properly filed request.
The panel’s decision will contain one of the following
findings:
Finding 1: The application remains
under appeal because there is at least one actual issue for
appeal. (Under this finding, the applicant can file an Appeal
Brief using the regular procedures.)
Finding 2: Prosecution on the merits
is reopened and the application is returned to the Examiner.
The panel may a propose an amendment that would place the
application in condition for allowance.
Finding 3: The application is allowed
on the existing claims.
Finding 4: The request fails to comply
with the submission requirements and is dismissed.
The Pilot Program for Pre-Appeal Brief Conferences
is scheduled to run for at least six months, at which time the
effectiveness will be evaluated. Additional details on the pilot
program are published in the Official Gazette of July
12, 2005.
Although this is a new and untried option at this
point, it does provide applicants with an opportunity to frame
their position prior to filing an Appeal Brief, and to get a
quick evaluation of this position. This option will be particularly
useful if the applicant believes that the Examiner has made
a clear error in rejecting the claims, or that the Examiner
has not presented a prima facie rejection. As the Patent
Office is providing for a 45-day time limit on mailing the panel’s
decision to the applicant, this new procedure will not unduly
delay the filing of an Appeal Brief, if applicant decides to
take that route, or filing a continuation application should
review of the panel's decision suggest that route is more appropriate.
After the initial six months, the pilot program
may become part of Patent Office procedures, it may be modified,
or it may not be continued. Thus, for cases in which a patent
application is now under final or second rejection and you are
considering filing an Appeal to the Board, it may provide a
good opportunity to obtain feedback from experienced Examiners.
It is also an opportunity to provide the Patent Office with
your input on whether this is a program worth keeping. A significant
number of cases are allowed or returned to the Examiner for
further action after an applicant files an Appeal Brief, and
this may be a new and faster way of reaching that result without
the time and expense of the full Appeal process.
For further information, please contact:
This Life Sciences Advisory Bulletin is a publication of the
Life Sciences Group of Davis Wright Tremaine LLP. Our purpose
in publishing this Advisory Bulletin is to inform our clients
and friends of developments in life sciences law. It is not
intended, nor should it be used, as a substitute for specific
legal advice as legal counsel may be given only in response
to inquiries regarding particular situations.
Copyright © 2005,
Davis Wright Tremaine LLP.
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