Tips From a Former Examiner: Pre-Appeal Brief Review

“Although there are time costs for a patent practitioner to prepare the pre-appeal brief, the request itself can offer significant value without substantial risk.”

https://depositphotos.com/10584789/stock-photo-advice-help-support-and-tips.htmlAfter two or more U.S. Patent and Trademark Office (USPTO) office actions on the merits, a patent applicant has the option to appeal the patent examiner’s decision rejecting one or more claims to a higher forum, i.e., the Patent Trial and Appeal Board (PTAB). Since 2005, the USPTO has provided an ongoing pilot program in which an appellant, upon the filing of a notice of appeal, may also request a pre-appeal brief review.

Why make this request? What are the pros and cons? What are the risks? In this article, I will explore these issues from my perspective as a former USPTO patent examiner.

Quality Control: The Quality Assurance Specialist

Although requesting pre-appeal brief review is widely recognized among experienced patent practitioners, what is less known is what goes on behind the scenes after the pre-appeal brief is filed. When a pre-appeal brief is docketed, the patent examiner’s supervisor, referred to as a supervisory patent examiner (SPE) assembles a review panel to confer and determine the merits of the pre-appeal brief and the ground(s) of rejection. The panel may determine to reopen prosecution, proceed to the PTAB, withdraw one or more rejections, or issue a notice of allowance. Once the conference has been held, the SPE will prepare and send the panel’s decision.

At a minimum, the pre-appeal brief review panel comprises the SPE, the patent examiner, and a quality assurance specialist (“QAS” or “RQAS”). This meeting differs from a regular appeal brief that also typically has at least three parties except that a second SPE is present rather than a QAS. This distinction is important. Both SPEs and QASs are former primary patent examiners. However, a SPE is a supervisor that is often juggling many non-examining related duties and, therefore, has less time to review the merits of an office action thoroughly. Consequently, SPEs have less time to consider the merits in depth. SPEs may rely on patent examiners to assist them such as by requesting that the examiner point out potential flaws in the ground(s) of rejection and/or focus on the strongest points of the pre-appeal brief. In contrast, a QAS’s primary function, as evident by their title, is to review the quality of office actions and to determine if the examiner met their burden in making a prima facie case. Thus, a pre-appeal review conference can be much more adversarial than a normal appeal brief conference because of the inherent function of a QAS.

After ten years at the USPTO, I do not recall ever having a contentious appeal conference. However, the same cannot be said for pre-appeal conferences in which I fondly recall some QASs making the panel discussions “spirited,” to put it delicately. Some QASs are notorious for playing devil’s advocate to a fault. In some instances, a QAS may argue for the sake of arguing without reviewing (or missing) all of the grounds of rejection and/or the prosecution history. It should be noted, however, that although a QAS may disagree, it is the SPE that makes the final call to allow the case to proceed to the PTAB or to withdraw any rejections. Although I do not recall any of my own pre-appeal brief conferences leading me to change my position by reopening prosecution or issuing an allowance, many examiners have had SPEs that are persuaded by QAS arguments made in support of the appellant.

Pre-Appeal Strategy

Filing a pre-appeal brief request has a lot of upside. For one, requesting for pre- appeal brief review does not change the notice of appeal fee and does not require any additional fees. Filing a pre-appeal brief also does not prevent the appellant from filing a standard appeal brief after a pre-appeal brief conference decision has been rendered. If some of the rejections are withdrawn after the pre-appeal brief decision, that creates less issues to address in the appeal brief. Depending on when the panel renders a decision, the request could provide additional time for an appellant before considering the next procedural step.

However, there are several limitations to consider when requesting a pre-appeal conference. The pre-appeal brief arguments must be succinct, concise, and focused since the brief may not exceed five total pages. The request cannot contain additional amendments, affidavits, or other evidence. There are also time constraints to consider since the appellant cannot extend the time to file the request for review later than the notice of appeal. Finally, if the pre-appeal brief is unpersuasive or if any rejections are withdrawn, the panel decision typically provides no explanation or reasoning.

Don’t Overlook the Pre-Appeal Process

Although there are time costs for a patent practitioner to prepare the pre-appeal brief, the request itself can offer significant value without substantial risk. The review process also involves a QAS that provides an additional quality check and that can potentially expose one or more flawed grounds of rejection the SPE and examiner may have overlooked. There are many factors to consider before determining to appeal a USPTO office action. However, once a decision to appeal is made, requesting pre-appeal brief review is an avenue that should not be overlooked.

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Author: stuartmiles
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10 comments so far. Add my comment.

  • [Avatar for Martin Sanchez]
    Martin Sanchez
    July 3, 2022 01:59 am

    Thank you for the information. I’m a prose inventor from Mexico (English is not my mother tongue, Spanish is) and I filed for a pre-appeal brief, unfortunately, the pre-appeal brief was rejected because I ended up faxing in a defective pre-appeal brief consisting of more than 5 pages and I didn’t have time to fix it because at that point I was not aware of the file wrapper. Then, I filed an Appeal Brief and I was able to get a Notice of Allowance before proceeding to the PTAB. The examiner failed to meet the burden of a prima facie. Now, I’m in the process of filing a PTA request. Thank you.

  • [Avatar for IamI]
    IamI
    May 31, 2022 01:54 pm

    There’s some interesting info here, but a lot of it doesn’t apply throughout the office. I’ve never had a contentious pre-appeal or appeal conference, and in some TCs, an RQAS or TQAS is the third member of the appeal conference panel as well.

    Plus, the SPE isn’t making the final call to go forward with an appeal during a pre-appeal conference in my personal experience.

  • [Avatar for Julie Burke]
    Julie Burke
    May 25, 2022 09:40 pm

    Thank you, Dennis, for your latest installment, I hope more of your insider tips articles are in the works. As a former QAS, I agree with much of your information, guidance and behind-the-scenes perspective.

    In my experience, the pre-appeal program lost much of its “appeal” following USPTO management and POPA union’s settlement agreement in 2009. Several hundred managers who oversaw the quality of the examiner’s rejections and allowances were quietly removed from management and their positions were reclassified into the POPA union. See http://www.popa.org/static/media/uploads/Agreements/bargainingunit_clarification_amended_100113.pdf

    These former managers included petitions examiners in Office of Petitions, re-exam examiners in the Central Reexamination Unit, RQAS in OPQA and the patent attorneys who ghost-draft APJ decisions at the PTAB. TQAS were lined up and separated out by name, with the majority being removed from management and placed in the union. At least in T1600, manager TQAS oversaw the SAWS program while union TQAS were walled off from the SAWS program.

    With regard to pre-appeal conferences, around this time, TQAS were instructed to designate themselves as mere “conferees” who couldn’t over ride the SPE and examiner’s decisions. In some TCs where TQAS who had a role in setting up the pre-appeal panel composition, that task was relegated over to the art units. It is difficult for one union employee to provide direction to another union employee.

    Upon complaint, the NLRB remarked that while managers who do not directly supervise (hire, fire, rate) employees may properly belong in a bargaining unit, it was highly unusual (conflict of interest, anyone?) for reviewers overseeing the quality of front line employees’ work to be placed into the same union as the front line employees whose work they review.

    Once in the POPA union, USPTO management and POPA promptly worked together to revise the performance plans and bonus structures for these former managers, downgrading expectations and amount of time allotted to review an examiner’s office action. These revised performance plans have not been made publicly available. Anecdotally, RQAS review was limited in time (to a fraction of the time the examiner was allowed for examination) and scope (a review of the documents in file wrapper, with little-to-no additional searching permitted to identify missing prior art). With less review, fewer errors are found. Voila, quality improves.

    Even 12 years later, the bulk of POPA executive committee are patent examiners, with only one representative from Central Reexamination Unit and none from BPAI, Office of Petitions, OPQA or TQAS. See
    http://www.popa.org/static/media/uploads/uploads/popa_roster.pdf

    As such, the reclassified employees’ have little say in USPTO management and POPA negotiations and have less authority with respect to review the quality of the patent examiners’ rejections and allowances.

    The 2009 USPTO-POPA reclassification settlement agreement and subsequent revisions to the quality reviewers’ performance and appraisal plans is just one more conveyance to herd patent examiners and the IP community down the road to Lake Wobegon.

    https://www.ipwatchdog.com/2021/07/01/usptos-roadmap-improved-patent-quality-lead-lake-wobegon/id=135152/

  • [Avatar for JNG]
    JNG
    May 25, 2022 03:19 pm

    thanks for your insights, its always nice to get an inside look
    for my part, I never had any luck with pre-appeal briefs (after about… 5? 6?) they seemed to not move the needle at all
    of course now that was SOME years back and that negative experience its what caused me not to look at them again
    maybe I will again
    much appreciation

  • [Avatar for concerned]
    concerned
    May 25, 2022 10:19 am

    Would you not know: CAFC opinion today is a case where a SSA employee was suspended due to unauthorized release of confidential records?

    AFGE Local 3438 v. SSA 2021-1972

  • [Avatar for primary examiner]
    primary examiner
    May 24, 2022 09:07 pm

    Concerned: I try my best to follow the rules and guidance that we are given, as I take my profession and its scope very seriously. Much appreciation for your kind words.

  • [Avatar for Anon]
    Anon
    May 24, 2022 06:59 pm

    Primary – you are not supposed to the one that assembles the panel.

    Period.

    That you may have always been the one is only yet another sign of internal error and disregard for process (note: while you share some of the blame, the bulk is largely above your pay grade).

    I will also note that this program has become jaded and fairly worthless – even for egregious cases.

    When the program first started out – it was very very different – and taken seriously.

    Now a days? not so much.

  • [Avatar for concerned]
    concerned
    May 24, 2022 05:54 pm

    Primary Examiner:

    I would have probably enjoyed having you on my application, you seem very reasonable.

    Fyi: Nobody has accepted my $500,000 challenge yet to prove if my steps can be performed mentally. The terms are laid out on this gentleman’s previous article. My funds are already secured for such a challenge.

    My claims may look like mental steps superficially until reading the specs and actually understanding what is accomplished.

    Benny, who gave me the 10 person sample in general for said challenge, was one who a few years back said I met the law, yet he would not give me the patent. I think Benny now has a better understanding.

    The PTAB also said I met the law as written and also said I met the definition of inventive concept in everyday language, just not the legal version, which is ???

    The PTAB is welcome to accept my challenge.

  • [Avatar for PE]
    PE
    May 24, 2022 04:09 pm

    Pre-appeal briefs don’t require a QAS, it will vary TC-to-TC and AU-to-AU. MPEP 1204.02 only requires, “The panel will include at least a supervisor and the examiner of record and will have the authority to reopen prosecution if appropriate.”

  • [Avatar for primary examiner]
    primary examiner
    May 24, 2022 01:59 pm

    The pre-appeal brief request can be quite useful, as long as the arguments are really honed it and precise. Having them looked at by the review panel can sometimes be invaluable.
    “When a pre-appeal brief is docketed, the patent examiner’s supervisor, referred to as a supervisory patent examiner (SPE) assembles a review panel to confer and determine the merits of the pre-appeal brief and the ground(s) of rejection. ”
    In all of my years at the PTO, I have been the one that assembles the review panel (selects the quality assurance person), not my SPE.

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