What to do if an Examiner is being unreasonable in Patent Examination?

An Austin Patent Attorney’s overview of Pre-Appeal Brief Conference Request

In a few instances as a patent attorney I felt that a patent examiner at the USPTO is being completely unreasonable in their rejection of claims. However, in these instances after amending the claims and working with the patent examiner to differentiate the claims and the cited art, the Examiner has maintained their positions that the claims are obvious in view of the cited art. When an Examiner maintains their rejection, there are several different avenues you can take, and one of those avenues that I frequently take is filing a pre-appeal brief conference request with the patent office.

What is a Pre-Appeal Brief Conference Request?

A Pre-Appeal Brief Conference request is a way for a board of 3 examiners to look at the claims, cited art, and arguments presented and make a decision on the pre-appeal brief before filing an appeal brief. In patent law, appeal briefs are very costly and take several years to reach a decision on, by filing a pre-appeal brief conference request, Applicants can save time and money, while having more examiners than just the standard single examiner look at the claims, cited art, and arguments.

What are the formality requirements of a Pre-Appeal Brief Conference Request?

The pre-appeal brief conference request must be less than 5 pages, be filed with a notice of appeal, have claims that are twice rejected by the examiner, and be filed with claims that are in condition for allowance.

The patent office’s standard on the five page limit is rather lenient. For example, margins, font size, line spacing may be changed to adhere to the five page limit. I have filed a pre-appeal brief conference request with line spacing of 1.25 per line, and it was accepted, but these standards may change in the future because a pre-appeal brief conference request is a relatively new practice with the USPTO.

Claims are twice rejected if the claim was rejected in a non-final office action and then a final office action. You may not file a notice of appeal before the claims are twice rejected.

Additionally, the claims should be filed as if they were in condition for allowance. If there is an antecedent basis issue with the claims, the claims have 35 USC 101 issues, and/or 35 USC 112 issues these should be filed before the pre-appeal brief conference request. It is important to note that a a pre-appeal brief conference request may not be filed on the same day as an RCE for the action or an amendment after final. Thus, it is recommended to file an RCE or an amendment after final at least the day before filing the pre-appeal brief conference request.

What are the possible outcomes of a Pre-Appeal Brief Conference Request?

After filing the Pre-Appeal Brief Conference Request, the office should mail a decision within two-three months. The response will either be 1) a new office action or 2) a notice indicating that the Examiner’s rejections are being upheld and to proceed with a standard appeal. If the notice indicates that the application remains under appeal, the applicant has three options 1) abandon the application by doing nothing, 2) continue with appeal, or 3) file an RCE to continue examination with the Examiner with amended claims.

By | 2013-09-17T14:55:29+00:00 September 17th, 2013|Blog|Comments Off on What to do if an Examiner is being unreasonable in Patent Examination?