A few years ago, the PTO realized that too many appeals were not reaching the Board for decision after the applicant filed an appeal brief. Many of these applications were simply allowed or the rejections withdrawn and new rejections issued. This is an extremely inefficient way to conduct examination and was very costly to applicants who had to file appeal briefs to get cases reviewed for inadequate rejections.
The Pre-Appeal Brief Conference is a way for an applicant to get a review of rejections that are otherwise eligible for appeal by a group of experienced examiners without the need to file a full appeal brief. The request for a conference is to be five pages or less, significantly shorter than most appeal briefs, and filed prior to the filing of a full brief. The request is to point out obvious deficiencies in the rejections or the lack of a prima facie case to establish the rejections. The applicant does have to file a notice of appeal with the request.
The panel of experienced examiners to review the request includes at least the examiner of record, the supervisor of the examiner, and another experienced examiner in the field. Within 45 days of the request, the panel indicates whether the application should continue on appeal, whether the examiner should reopen prosecution so that the examiner can issue new or revised rejections, or whether the examiner should allow the claims.
The PTO released the following data on pre-appeal brief conferences:
The PTO also released comparative data on Appeal Brief Conferences. These are conferences that take place after the appeal brief has been filed. Prior to the implementation of the Pre-Appeal Brief Conference procedure, there were significantly more appeals that did not reach the Board after the appeal brief was filed.
As noted, during FY2010, 59% of applications where an appeal brief was filed proceeded with an Examiner’s Answer, while 23% had prosecution reopened and 17% were allowed. This contrasts significantly with FY2001-2005 where 59-60% of the time, either prosecution was reopened or all of the rejections were withdrawn once an appeal brief was filed.
More and more pre-appeal brief requests are being filed, up to 34% of all cases where a Notice of Appeal was filed in FY2010. About 56% of the time, these cases proceed with the appeal, while in 42-43% of the cases, prosecution is reopened or the claims are allowed. A request for a pre-appeal brief conference is significantly shorter and more efficient to prepare and file than an appeal brief. This seems like a no-brainer to avoid the expense of a costly appeal brief. The system seems to be a success.
Should Applicants Request a Pre-Appeal Brief Conference?
Applicants should not use these requests to avoid appealing a case, but should request a conference only when the other alternatives to appeal have been exhausted. The applicant should first be certain that an examiner interview or other methods of persuasion will not work and that the rejection is truly deficient. In such a case, by all means, request the pre-appeal brief conference. There is at least a 42-43% chance that the claims will be allowed or prosecution re-opened with another Office Action and perhaps the expense of preparing and filing an appeal brief can be avoided.