Every practitioner has encountered a recalcitrant examiner or an examiner that exhibits an unexplained animus to the invention. Parallel with this observation is the thought the “if I could just get this file in front of someone else, i.e., someone rational, the claims would be allowed.”
The Patent Office provides an imperfect remedy. In a program initiated in 2005 and since extended, the Pre-Appeal Brief Conference Pilot Program provides a
limited opportunity to have new faces review your application. If the application has been rejected at least two times, the applicant can file a notice of appeal. Optionally, at the same time, the applicant can file a request for a pre brief conference. The conference is a misnomer since the applicant or his/her attorney does not participate in the conference
The purpose of the conference is stated in the introductory language of the 2005 pilot program. The purpose is to afford the applicant in independent review by experienced examiners prior to the applicant having to incur the time and expense of writing an appeal brief.
In fact, the patent examiner participates in the review. Also participating may be the supervisory examiner (who may have approved the examiner’s earlier rejection) and a third examiner (possibly from another art unit). This third examiner will be totally unfamiliar with your application and may be unfamiliar with the technology. It can be predicted that the examiner, being most familiar with the application, will be very influential.
The applicant’s participation is a five (5) page summary of the issues. The benefit to the applicant is that the applicant is spared the expense and effort of preparing a formal appeal brief. The USPTO guidelines stress that the five page summary be devoted to pointing out clear errors by the examiner. For example, the summary should highlight if the examiner has omitted one of the applicant’s claim limitations in making a section 103 rejection for obviousness. In contrast, the limited five pages should not be devoted to alternative interpretations of claim language.
The results of these conferences are relatively encouraging. In approximately 40 percent of the cases, the conference overturns at least one basis of the examiner’s rejection and the application returns to prosecution. In over half of the cases, however, the conference upholds the rejection by the examiner and the case continues on to appeal.
There is no additional cost in requesting a conference. There is of course still the appeal filing fee. This fee is, however, less than the filing fee for a request for continued examination (RCE). The RCE is the principal remedy for an application faced with a final rejection.
October 3, 2013