Pre Appeal Brief Conference

Posted Wednesday, June 01, 2011.

Once a non-provisional patent application is filed, after an average of 18 months, the application receives its first substantive review by an examiner. In the majority of cases the patent claims of the application are rejected. The application can respond and argue for patentability, and/or make amendments to the claims.

Following the examiner’s second review of the application, if the examiner still does not agree with the applicant that a patent should issue, the claims can be rejected a second time with the rejection being made “final.” At that point, the applicant has a couple of options, one of them being an appeal to the Board of Patent Appeals and Interferences (BPAI).

Similar to an appeal heard in an Article III court, the parties (the applicant and the examiner) submit appellate briefs to the BPAI prior to the appellate proceeding. The applicant’s appellate brief is due within 60 days of filing the notice of appeal. An appellate brief contains information needed by the board to decide whether to uphold the rejection or to return the case to the examiner for further examination (which usually means a patent). Appellate briefs are long and thorough documents, typically are expensive to prepare, and require the applicant to pay an additional PTO fee just for filing. Then the case goes into the queue for the BPAI, which can be three to five years long.

A few years ago, the PTO added a proceeding called a “Pre Appeal Brief Conference” (PABC). Where there is reversible procedural error in the examiner’s rejection, an applicant can ask for a PABC when the notice of appeal is filed. The procedure is for the applicant to submit with the notice of appeal a memo of no more than five pages which points out the examiner’s error. For example, an examiner may have asserted an invention is obvious without providing any evidence of obviousness. If the BPAI were to get such a case where that was the sole issue, a reversal of the examiner would be probable.

There is no fee for filing the PABC memo, nor is there a fee for requesting the conference. The PABC is held at the PTO within 45 days of the submission of the notice of appeal and the memo. The applicant and the applicant’s agent or attorney do not participate. Instead, the examiner, the examiner’s supervisor, and a third individual at the PTO who specializes in appeals discuss the memo. Statistics kept since the institution of the PABC procedure at the PTO show that in 1/3 to 1/2 of the cases, prosecution is re-opened following a PABC, with a patent often following.

So, the benefits of the PABC for the applicant if prosecution is re-opened are that the applicant does not need to pay a practioner to prepare the detailed brief, the applicant does not need to pay the PTO the filing fee to file the appeal brief, and there might be a positive decision from the PABC much sooner than an appeal might actually be heard.

The flip side is that if the PABC decision is not in the applicant’s favor – in other words, that the case must proceed to the appeal – then the applicant has paid the practitioner to research and prepare a five-page PABC memo and still has to pay for the appellate brief. (The 60-day clock for getting the appellate brief filed is re-started once the notice of the PABC decision is mailed.)

However, if still there’s a good case for patentability following a final rejection predicated on reversible procedural error on the part of the examiner, the PABC procedure is an excellent choice. In many instances, merely the 1 in 3 possibility of avoiding the 3-5 year period before an appeal is heard makes a PABC worth a try.

Remember, the PABC memo must be filed concurrently with the notice of appeal. A qualified patent agent or attorney should be able to review the case to see whether it’s a good one to request the PABC. This will most often be in instances where there is a clear reversible error in the final rejection because the examiner has not carried his or her burden by adducing evidence.

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