A Pre-Appeal Brief Conference is a Winning Strategy, Even if it Probably Won’t Lead to Allowance

USPTO Madison BuildingThe USPTO’s Pre-Appeal Brief Conference Pilot Program was introduced in July of 2005. It was designed to solve a problem wherein applicants would prepare an expensive and time-consuming appeal brief, only to have their examiner reopen prosecution or issue an allowance based on a panel review of their appeal brief. The pre-appeal brief program allows the applicant to instead file a request with their notice of appeal to have the panel review conducted prior to filing an appeal brief.

The requirements for a pre-appeal brief conference (PBC) are much simpler than for a full appeal brief, as arguments are limited to five pages, which the USPTO expects to be short, to the point, and devoid of long, detailed explanations. The arguments in a PBC submission should specify clear errors in the examiner’s rejection and must have factual bases, rather than arguments as to the interpretation of prior art teachings or claim scope. After argument, the panel of a PBC can maintain the examiner’s rejection, thus continuing the appeal to the appeal brief stage, reopen prosecution, or allow the application.

There are a host of benefits to the applicant inherent in requesting a PBC, most importantly that it saves time and money by allowing appeal-level review without having to prepare an appeal brief. Given that the USPTO’s fee for PTAB consideration is $2,000 on top of attorney’s fees to prepare an appeal brief, this is a significant savings. A PBC can also be used in the place of a Request for Continued Examination (RCE) to avoid the narrowing of claims that results from that strategy. And, even if the PBC is completely unsuccessful for the applicant, it does not foreclose the opportunity to make a full appeal to the PTAB. Because there is no additional cost for a PBC other than the cost to file a notice of appeal, there is not much to lose for an applicant by choosing this strategy.

How Well Does a Pre-Appeal Brief Conference Work?

After several articles and webinars discussing appeals outcomes at the USPTO, we have received numerous requests for Pre-Appeal Brief Conference data to explain how advantageous the program really is for applicants. Using the vast data resources of our system and Public PAIR, we studied all appeals from January 1, 2006 (six months after the program was instituted), to the present day, including pending PBC cases. For the purposes of this article, we were chiefly concerned with the overall effect that a PBC had on the outcome of an appeal. As such, we have indicated that a PBC ended with a “decision for applicant” when the application was either allowed or prosecution was reopened following a PBC decision, regardless of whether the decision was due to the PBC decision itself or a subsequent pre-appeal brief office action. What we found was that, while few PBCs result in an allowance from the PBC decision itself, they have a net positive effect on an application’s overall appeals success. An explanation of our findings follows.

Taking a broad look at appeals at the USPTO, a little less than half include a request for a PBC (see Figure 1).

When looking at the outcomes of all appeals at the USPTO, including those with and without a PBC request, only 18% are resolved by the PBC–meaning that there was either an PBC decision allowance or prosecution was reopened. The vast majority of appeals are resolved at the post-brief stage, either by the PTAB (31%) or by non-PTAB means (33%). “Other” appeal outcomes include those in which the appeal was interrupted by non-appeal prosecution events, such as RCEs and abandonments. See Figure 2 for a visual representation of this data.

When looking at the outcomes only of applications with a PBC request, there is a decision for the applicant in only 35% of cases, while there is a decision to continue in 57% of cases. A negligible 1% of these appeals were intervened by a non-appeal prosecution event, while 7% were pending at the time of our analysis or had no decision issued prior to filing an appeal brief. See Figure 3 for how these percentages break down.

 

Delving a bit deeper into this data, we found that only 14% of all appeals with PBC requests resulted in a notice of allowance, either from the PBC decision itself or from the next subsequent office action if prosecution was reopened. Among the other outcomes where there was a decision for the applicant, 21.5% resulted in the reopening of prosecution, followed by a new non-final or final rejection. Thus, most appeals move on to the appeal brief stage and even to the PTAB, whether they request a PBC or not. See Figure 4 for a specific breakdown of the outcomes of appeals with PBC requests.

However, the news is not all bad for applicants. As shown in Figure 4 below, appeals in which a PBC was requested have an overall win rate that is roughly 13% (or 9.8 percentage points) higher than appeals in which there was no PBC request. They are also about 8% (or 3.6 percentage points) more successful if they reach the PTAB. The only metric in which PBC appeals are less successful than non-PBC appeals is in overall post-brief win rate, where they have a win rate that is about 16% (or 11.5 percentage points) lower. We suspect that this may be the case because appeals that likely would have been resolved easily through non-PTAB means were already resolved by the PBC.

What This Means

In the short term, PBCs do not appear to be home runs for most applicants, as they seldom result in an allowance as a direct outcome of the conference. It’s more likely that the PBC will be successful at least in reopening prosecution, but even reopening prosecution does not necessarily mean an eventual allowance. Neither, for that matter, does an appeal. However, PBC requests are nonetheless correlated with significantly higher chances of a successful appeal. So, for applicants who request a PBC as part of their overall appeal strategy, it appears that the PBC proves advantageous after a decision to continue, whether their appeal ends up in the PTAB or not.

The Author

James Cosgrove

James Cosgrove is a Legal Analyst at Juristat, a legal tech company that develops predictive models of the behavior of judges, patent examiners, attorneys, and other entities. He is a 2014 graduate of St. Louis University School of Law. A member of Juristat’s marketing team, he has written extensively about big data in the law, including Juristat’s first white paper on the effectiveness of data in patent prosecution and an e-book charting the effects of the Alice decision on the USPTO.

James Cosgrove

Katrina Brundage is a Data Scientist & Legal Analyst at Juristat, a legal tech company that develops predictive models on the behavior of judges, patent examiners, attorneys, and other entities. Juristat is used by Fortune 500 companies, NLJ 250 law firms, and boutique firms around the country. Katrina holds a J.D. and a M.S. in Business Analytics from Michigan State University. While at MSU Law, Katrina’s involvement in LegalRnD and ReInventLaw, MSU’s legal services innovation and technology initiatives, fueled her interest in legal analytics in the patent industry.

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There are currently 1 Comment comments.

  1. Curious January 16, 2017 12:03 pm

    The flaw in your analysis is that the filing of a Request for PBC is not a random event. A Request for PBC should only be filed when there is clear and unmistakable error in the Examiner’s analysis. Accordingly, there is selection bias in your analysis.

    It isn’t that the filing of a Request for PBC will make the case stronger. Rather, it is because the case is strong that the filing of a Request for PBC can/should be made.

    In short, a Request for PBC is a watered-down Appeal Brief — it isn’t going to make the case stronger.