EXAMINER REVIEW PANEL OF APPEAL

To overcome the backlog of cases, the USPTO is expediting the examination of cases. This can result in an examiner issuing unnecessary restriction requirements, refusing to consider claim amendments and, worse, issuing final rejections without fully comprehending the claimed invention. Now it seems inevitable that the applicant will be limited in its ability to requested continued examination or file continuation applications.

One procedure that may be of some value is to file notice of appeal and simultaneously request review of the appeal by a panel of examiners (including the examiner of record). This is a program that was started in July 2005 and has been extended.

It allows the applicant an opportunity to request review of the identified matters on appeal prior to writing a brief. The stated purpose is “(1) to identify the presence or absence of clearly improper rejections based upon error(s) in facts, or (2) to identify the omission or presence of essential elements required to establish a prima facie rejection.”

Note that the procedure is not intended to engage in interpretation o f the claims or prior art teachings.

The contents of the request are specified. It is to be a concise “Pre-Appeal Brief Request for Review”, limited to 5 pages. This document is to be filed with the notice of appeal. No after-final or proposed amendments may accompany the request.

In view of the page limitation, the applicant is encouraged to incorporate previously made arguments by reference. Again, this procedure is meant to address factual errors, in contrast to arguing interpretation of prior art teaching or claim scope.

Note the applicant has no right to an interview or to attend the review meeting of the panel of examiners. A decision on the request is to be made within 45 days.

The Office may (i) continue the appeal on the basis that there is one actual issue for appeal, (ii) reopen prosecution on the merits, (iii) allow the claims, (iv) find the request deficient and dismiss the request.

I see the potential advantage of this proceeding to be where the examiner has never focused on the application and the factual distinctions between the application and the cited prior art. (This is a real issue when there are only two office actions and the examiner doesn’t read your pre-interview summary.)

If the request is dismissed, there is still a one month period to file the appeal brief. (The examiner is going to have to review your brief and write his/her own brief.) Anticipating having to rely on this procedure will obviously drive greater care by the practitioner in setting forth factual errors in the responses to office actions.