Posts Tagged: "pre-appeal brief conference"

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

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.

James Cosgrove & Katrina Brundage

January 12, 2017

Ex Parte Appeal as a Potential Means to Quick Allowances

We set out to study the life cycle of appeals by conducting a stage-by-stage analysis to identify what fraction of applications were exiting the appeal cycle and how. Specifically, we obtained data (using LexisNexis® PatentAdvisorSM) corresponding to each appeal brief filed between January 1, 2010, and December 31, 2011. The data identified the stage at which the appeal exited the appeal process and the next significant event after exiting the appeal process. This assessment thus provides information pertinent to assessing what delays, costs and decision outcomes are truly associated with appeals… Examiners frequently terminate an appeal cycle expediently with an office action (often leading to an allowance) or an allowance, in which case the delay and a portion of the expense is avoided.

Kate Gaudry & Sameer Vadera

March 21, 2016

10 Years Later – A Look at the Efficacy of the Pre-Appeal Brief Conference Program

For 61% of the non-defective requests, the panel decided that there was an actual issue for appeal, such that the applicant would either need to file an Appeal Brief, reengage the Examiner or abandon the application. For 33% of the non-defective requests, the panel decided that prosecution was to be reopened. For only 6% of requests were the panel decisions that an application was to be allowed.

Karl Fazio & Kate Gaudry

July 21, 2015

What the Board of Patent Appeals Can Learn from the NFL

The difference between a successful and unsuccessful season for an NFL Football Team often times hinges upon the outcome of a single game. In some cases, a single play of a game can doom a team’s season or even a coaching/playing career. Due to the heightened importance of games in the NFL, indeed, the importance of every play, instant replay…

Scott A. McKeown

December 20, 2009