Patent Advisory Bulletin
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 Patent Advisory Bulletin is a publication of the Patent Group of Davis Wright Tremaine LLP. Our purpose in publishing this Advisory Bulletin is to inform our clients and friends of developments in patent 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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