USPTO Implements Pre-Appeal Brief Conference

Effective July 12, 2005, the USPTO begins a new program that allows Applicants to request formal review of the legal and factual basis of pending rejections in an application prior to filing an appeal brief. Under this program, a panel of examiners will review the case and determine whether the status of the application is appropriate for appeal, prior to filing an appeal brief. 

The panel decisions will issue in one of four possibilities:

  1. Application remains on appeal (at least one issue remains for appeal);
  2. Prosecution is reopened and an Office communication will issue in due course (panel may suggest amendments);
  3. Application allowed on the pending claims and prosecution remains closed; and
  4. Request dismissed for failure to comply with submission requirements.

This program is designed to reduce costs associated with the preparation of appeal briefs. The normal appeal practice remains available to Applicants.

See the Official Gazette notice (link) for complete details regarding this procedural option, including: General Provisions, Conditions Necessary to Request a Panel Review, Content of Request, Content of Remarks or Arguments, USPTO Consideration of the Request, Format of Panel Decision, Time Periods Before/After a Panel Decision, and Administrative Matters.

NOTE: This USPTO News Update was written by Christopher Singer.  Chris has a PhD in bio-inorganic chemistry from Northwestern University and is a patent attorney at MBHB.  [Singer Bio].