The USPTO provided outcome statistics from the Pre-Appeal Brief Review program in the notice of proposed rulemaking for the proposed changes to ex parte appeal practice before the USPTO Board of Patent Appeals and Interferences. The data reveal mixed results, but are encouraging enough to justify the relatively low costs of the program.

The Pre-Appeal Brief Review Program

The Pre-Appeal Brief Review program was started as a pilot program in 2005. The program permits an applicant to obtain panel review of appealed rejections before an Appeal Brief is filed. The panel is made up of three examiners, including the examiner of record on the application.

According to the USPTO, an applicant should consider using the program “[i]f the applicant feels the rejections of record are clearly not proper and are without basis, . . . based upon a clear legal or factual deficiency in the rejections rather than an interpretation of the claims or prior art teachings.”

A Request for Pre-Appeal Brief Review must be filed with the Notice of Appeal, and can include up to five pages of arguments against the rejections. No additional fee is required for this program. Thus, the costs of participating in the program are minimal, relating to the costs of preparing the brief summary of arguments.

The panel can reach one of four decisions:

  1. The application remains under appeal because there is at least one actual issue for appeal.
  2. Prosecution on the merits is reopened and an appropriate Office communication will follow in due course. In appropriate circumstances, a proposed amendment may accompany the panel’s decision proposing changes that, if accepted, may result in an indication of allowability for the contested claim(s).
  3. The application is allowed on the existing claims and prosecution remains closed.
  4. The request fails to comply with the submission requirements and is dismissed.

If the panel decides that the application should proceed to appeal on any rejection, the panel decision will not indicate whether it agreed with the applicant on any other issue. Thus, such a decision does not give the applicant any insight into the panel’s view of the strength of the applicant’s position on any individual rejections.

For applications that proceed to appeal, the Appeal Brief is due two months from the filing date of the Notice of Appeal or one month from the panel decision, whichever is later.

Appeal Conferences

Appeal conferences are held in every appeal after a compliant Appeal Brief is filed, unless the examiner decides that the appeal should not proceed and a supervisory patent examiner (SPE) agrees.

The panel makeup for an appeal conference is similar to that for Pre-Appeal Brief Review, and includes the examiner of record, a SPE, and another examiner. The panel considers whether any or all of the rejections should be maintained.

The Examiner’s Answer reflects the outcome of the appeal conference, and may indicate that one or more rejections have been overcome. Alternatively, prosecution may be reopened or the application may be allowed.

The Statistics

In promulgating the new proposed appeal rules, the USPTO addressed the comments received in response to the December 22, 2009 Advance Notice of Proposed Rulemaking (ANPRM) relating to ex parte appeal practice. One comment requested statistics on the Pre-Appeal Brief program. The USPTO provided data for each full fiscal year (FY) since the program was launched, and also provided statistics from Appeal Conferences. The following chart (taken from the Federal Register notice) shows:

  1. The annual number of such requests.
  2. The percent of notices of appeal that contain a request
  3. The outcomes of the conferences
  4.  A comparison of the outcomes of the Pre-Appeal Brief Conference to the Appeal Conference.

If an applicant files a Request for Pre-Appeal Brief Review in the hopes of having all rejections reversed, he is likely to be disappointed, as only 2-5% of Requests have that positive outcome.

On the other hand, nearly 40% of Requests result in prosecution being reopened, which suggests that at least some rejections are overcome or modified.

Still, slightly more than 50% of all Requests result in a determination that the appeal should proceed.

It is interesting to see that the percent of appeals in which Requests for Pre-Appeal Brief Review are filed has slowly but steadily increased each year. Still, usage is low (at about 33%), given the low costs of the program. This could be due to the complexities of the issues on appeal, a belief that the panel makeup is stacked against the applicant, the lack of information provided when the panel decides that the appeal should proceed, or a desire to expedite the appeal process.

Appeal Conferences are three times more likely to result in all rejections being reversed (15%). This is not surprising given that the Appeal Brief is likely to present the applicant’s position more thoroughly and with citations to legal authority, while a Request for Pre-Appeal Brief Review is limited to five pages of arguments regardless of the number of issues on appeal.

What is more concerning is the steady drop in the Appeal Conference reversal rate since 2002, with the current reversal rate being less than half that of the 2002 rate (34%). This could be due to stronger rejections, but recent statistics from the Board still show about a 30% reversal rate, with a further 14.5% of cases being reversed-in-part.

Why Bother?

If barely 5% of Requests for Pre-Appeal Brief Review result in the rejections being reversed, why should an applicant participate in the program? Looking at the statistics from a different perspective, they indicate that in 44% of the cases prosecution is advanced in some way, with prosecution being reopened even if not all rejections are reversed. Given the inexpensive and simple procedures of the program, even a low success rate can be worth the costs.