WHY THE USPTO SHOULD MAKE PRE-APPEAL BRIEF CONFERENCES PERMANENT: Back in June, the USPTO formed a new pilot program where applications being appealed from a final rejection could request a USPTO panel to review the rejection for prima facie error. The pilot program is scheduled to run at least until the end of the year, with the possibility of further extensions or modifications. If the USPTO decides the program is helpful, they will permanently incorporate the process into 37 C.F.R.

In my opinion, this was the most significant move by the USPTO in 2005 for improving the examination process (arguably tied with the establishment of the reexamination unit). I've successfully used this program numerous times already, and I have been impressed. Here are the top 5 reasons I support the program:

(1) Speed/Cost - the decisions of the panel should come within 45 days after a request is submitted. So far, the USPTO has held true to its promise. The first round of requests I submitted in applications all came before the 45 day period. Also, tt doesn't cost anything extra to request it (how long will THAT last, I wonder).

(2) It's a form of arbitration for USPTO practitioners - when you hit a wall during examination, it always helps to get a third party involved to review the situation. Instead of waiting 6 months or more for a formal review by the BPAI, you get a preliminary assessment your position and the position of the Examiner within 45 days.

(3) It's a win-win proposition for applicants - if the panel agrees with your arguments, the rejection is reversed (and in one case I had, the application was allowed outright). If your arguments aren't dead-on persuasive, you continue to the BPAI for further review. Nothing is lost during the process.

(4) A memorialized record of the decision - the most frustrating part of bad rejections and the earlier appeals process was that, once the appeal brief was filed, it wasn't uncommon to have a new office action magically appear that contained new art. Such reversals typically happened after the appeal conference (see MPEP 1207). By that point, the client is forced to pay considerable sums for the preparation and filing of the brief ($1,000 in USPTO fees alone), only to find out that they were right in the first place. Also, there is no record that is produced from the result of the appeal conference, so you any unaddressed issues remain a mystery. For example:

Your appeal brief repeats your earlier arguments traversing a 102 rejection:

"reference X does not teach or suggest elements A, B, and C."

After an appeal conference, the examiner withdraws the rejection issues a new rejection based on 35 USC 103, stating

"reference X doesn't teach C, but reference Y does. It would have been obvious . . ."

What did that get you? After spending all that time and money, you are only marginally better off than you were before. What about A and B? Under such rejections, you never get a clear picture on what took place.

And finally:

(5) The pre-appeal brief conference also reviews obviousness - it's almost a mantra at the USPTO: "when in doubt, make an obviousness rejection." I don't necessarily blame the examiners for this, since finding a "teaching, suggestion or motivation to combine" is a pretty convoluted and fact-specific concept in patent law (a question of law based on underlying facts). It's always convenient to make such rejections from the examiner side of things, but they are often wrong, especially when a new examiner is involved. By turning to experienced examiners participating in the conference, the odds of having such rejections overturned should increase.

Dennis Crouch from Patently-O is seeking comments from practitioners on this topic and intends to post on the results soon.