Pre-Appeal Brief Review
The Mind of the Patent Examiner SeriesBy: Dennis J. Parad
August 30, 2021
This is the third article in a series from a former USPTO patent examiner to help prepare those applying for patents to understand what to expect and how to best assist the application process.
Other articles in this series:
After two or more USPTO office actions on the merits, the patent applicant has the option to appeal the patent examiner’s decision rejecting one or more claims to a higher forum, i.e., the Patent Trial & Appeal Board (“PTAB”). Since 2005, the USPTO has provided an ongoing pilot program in which an appellant, upon the filing of a notice of appeal, may also request a pre-appeal brief review. Why make this request? What are the pros and cons? What are the risks? In this article, I will explore these issues from my perspective as a former USPTO patent examiner.
QUALITY CONTROL: THE QUALITY ASSURANCE SPECIALIST (“QAS”)
Although requesting pre-appeal brief review is widely recognized among experienced patent practitioners, what is less known is what goes on behind the scenes after the pre-appeal brief is filed. When a pre-appeal brief is docketed, the patent examiner’s supervisor, referred to as a supervisory patent examiner (“SPE”) assembles a review panel to confer and determine the merits of the pre-appeal brief and the ground(s) of rejection. The panel may determine to reopen prosecution, proceed to the PTAB, withdraw one or more rejections, or issue a notice of allowance. Once the conference has been held, the SPE will prepare and send the panel’s decision.
At a minimum, the pre-appeal brief review panel includes the SPE, the patent examiner, and a quality assurance specialist (“QAS” or “RQAS”). This meeting differs from a regular appeal brief, which also typically has at least three parties, except that a second SPE is present rather than a QAS. This distinction is important. Both SPEs and QASs are former primary patent examiners. However, a SPE is a supervisor that is often juggling many non-examining related duties and, therefore, has less time to review the merits of an office action thoroughly. Consequently, SPEs have less time to consider the merits in depth. SPEs may rely on patent examiners to assist them by requesting that the examiner point out potential flaws in the ground(s) of rejection and/or focus on the strongest points of the pre-appeal brief. In contrast, a QAS’s primary function, as evident by their title, is to review the quality of office actions and to determine if the examiner met their burden in making a prima facie case. Thus, a pre-appeal review conference can be much more adversarial than a normal appeal brief conference because of the inherent function of a QAS.
After ten years at the USPTO, I do not recall ever having a contentious appeal conference. However, the same cannot be said for pre-appeal conferences in which I fondly recall some QASs making the panel discussions “spirited,” to put it delicately. Some QASs are notorious for playing devil’s advocate to a fault. In some instances, a QAS may argue for the sake of arguing without reviewing (or missing) all the grounds of rejection and/or the prosecution history. It should be noted, however, that although a QAS may disagree, it is the SPE that makes the final call to allow the case to proceed to the PTAB or to withdraw any rejections. Although I do not recall any of my own pre-appeal brief conferences leading me to change my position by reopening prosecution or issuing an allowance, many examiners have had SPEs that are persuaded by QAS arguments made in support of the appellant.
Filing a pre-appeal brief request has a lot of upside. For one, requesting a pre-appeal brief review does not change the notice of appeal fee and does not require any additional fees. Filing a pre-appeal brief also does not prevent the appellant from filing a standard appeal brief after a pre-appeal brief conference decision has been rendered. If some of the rejections are withdrawn after the pre-appeal brief decision, that creates less issues to address in the appeal brief. Depending on when the panel renders a decision, the request could provide additional time for an appellant before considering the next procedural step.
However, there are several limitations to consider when requesting pre-appeal brief review. The pre-appeal brief arguments must be succinct, concise, and focused since the brief may not exceed five (5) total pages. The request cannot contain additional amendments, affidavits, or other evidence. There are also time constraints to consider since the appellant cannot extend the time to file the request for review later than the notice of appeal. Finally, if the pre-appeal brief is unpersuasive or if any rejections are withdrawn, the panel decision typically provides no explanation or reasoning.
Although there are time costs for a patent practitioner to prepare the pre-appeal brief, the request itself can offer significant value without substantial risk. The review process also involves a QAS that provides an additional quality check and that can potentially expose one or more flawed grounds of rejection the SPE and examiner may have overlooked. There are many factors to consider before determining to appeal a USPTO office action. However, once a decision to appeal is made, requesting pre-appeal brief review is an avenue that should not be overlooked.
For more information, please contact Dennis Parad.