For most patent prosecutors, the thought of having to re-argue what is believed to be a solid, well-reasoned response to a rejection for a second, third, or even fourth time, is extremely frustrating. Understandably, it is also aggravating for the Examiner to re-read what they believe is a flawed argument. In many cases, the use of an Ex Parte Appeal of the rejections in the Office Action can provide clarity and resolve the issues, one way or the other. Now, a recent Pilot Program instituted by the USPTO has made the Appeals process an even more viable and attractive option for resolving such long-standing stalemates.
An Ex Parte Appeal can be filed with the Patent Trial and Appeal Board (PTAB) after receiving a Final Office Action, or for any patent application whose claims have been twice rejected. While appealing the rejection of the claims to the PTAB can certainly be more costly than simply filing a response to the Office Action, an Appeal provides several distinct advantages over a simple response. And as a result of the new USPTO pilot program, the wait for a decision has been significantly shortened.
A first advantage of filing an Appeal is the ability to utilize the USPTO’s Pre-Appeal Brief Conference procedure. As outlined in M.P.E.P. § 1204.02, along with filing a Notice of Appeal, a request for pre-appeal brief review can also be filed. The request is to be accompanied by arguments, not to exceed five pages. This request is then reviewed by the Examiner of record and at least one supervisor. While the Pre-Appeal Brief conference is designed to address rejections of record that are “improper and without basis” or that are “based on factual or legal error,1” it may be possible to obtain additional feedback from the reviewing Examiners that may help address claim interpretation or regarding evidence that may be required to overcome a rejection.
The second and perhaps most important advantage of filing an Appeal is that the Appeal Brief prepared by Applicants will be reviewed during an Appeal Conference. As set forth in M.P.E.P. § 1207.01, the participants of the Appeal Conference include the Examiner of record, a supervisory patent Examiner (SPE) and one other examiner, known as a conferee, “having sufficient experience to be of assistance in the consideration of the merits of the issues on appeal.2” Furthermore, the Appeal Conference considers “the possibility of dropping cumulative art rejections and eliminating technical rejections of doubtful value.3” Thus, the Appeal Conference is an opportunity to have both the Examiner’s rejections and Applicant’s arguments closely reviewed by two additional “experienced” Examiners, beyond the Examiner of record. This Appeal Conference has always been an important and often fruitful exercise during prosecution to eliminate questionable rejections or consolidate multiple obviousness rejections under a single set of prior art. However, with the requirement for remote work as a result of the COVID-19 pandemic, the Appeal Conference has become even more important and more valuable. The Conference may represent one of the few opportunities for an Examiner of record to actually discuss in real time his or her rejections with other Examiners in the art unit, including rejections in a turbulent or difficult area of the law, such as patent eligibility.
Now, a recent Pilot Program set forth by the USPTO has reduced an additional hurdle when considering whether or not to Appeal a rejection – the significant amount of time required before a decision is reached by the PTAB. Effective July 2, 2020, the Fast-Track Appeals Pilot program offers a way to reduce the time between the Appeal Conference, and the PTAB hearing.4 In order to enter the Program, Applicant must file a Petition, along with the fee of $400, in an Appeal for which the Notice of Appeal has been filed, and a PTAB docketing notice has been issued (i.e., shortly after Applicant’s Reply brief has been filed and the Appeal Brief Forwarding Fee has been paid). Upon receipt of the Petition and the Required Fee, the Appeal will be advanced out of turn, and accorded fast-track status. As a result, the PTAB will endeavor to issue a decision on the Appeal within 6 months from the date of acceptance of the petition; oral hearings by the PTAB will still take place. The Fast-Track Appeals Pilot Program will accept such petitions for up to one year from the effective date of the program (i.e., until July 2, 2021) or until 500 appeals (125 per quarter) have been accorded fast-track status under the program, whichever occurs earlier.5 While the time from filing the Reply Brief to hearing and ultimate decision from the PTAB can vary, this author’s experience notes that reduction from generally 10-12 months (docketing notice to PTAB decision) to 6 months certainly warrants consideration of filing the Petition and $400 fee, as well as consideration of the use of the Appeals process in more applications where prosecution has stalled.
As noted above, the USPTO’s Appeal process presents a number of advantages to consider when traditional response strategies of Office Actions are not working. The ability to have more than one Examiner review rejections and counter arguments, along with the ability to reduce the overall time to a decision from the PTAB by up to 6 months or more, certainly warrants the use of Appeals in more pending applications. Particularly in view of the current remote work requirement at the USPTO, Appeals may represent the best option for having Applicant’s arguments considered by a wider, examining audience.
- See United States patent and Trademark Office OG Notice, “New Pre-Appeal Brief Conference Pilot Program,” July 12, 2005.
- M.P.E.P. § 1207.01, Second Paragraph.
- Id.
- Fast-Track Appeals Pilot Program, Federal Register, Vol. 85. No 128, July 2, 2020.
- Id.
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