In filing a patent application at the USPTO, an applicant cannot choose its Examiner. Nor can it typically switch to a different Examiner once assigned. And since not all Examiners are equally agreeable or reasonable, being stuck with an Examiner sometimes puts the applicant at a serious disadvantage.
Two different appeal conferences provide applications with another set of examiner eyes. Here, we show that these fresh sets of eyes can have meaningful impacts on prosecution despite any built-in biases. This can happen even before the appeal reaches the PTAB judges’ desk.
The first procedure, pre-appeal brief request for review, is a relatively quick and inexpensive way to resolve “clear errors” in rejections. This brief is limited to 5 pages and is filed at the same time as filing a Notice of Appeal, with no extra fee for filing the request. A panel of three Examiners assesses the merits of the request for review, which guarantees that at least one examiner beyond the immediate examiner and his/her supervisor look at this application.
One might suspect that pre-appeal conferences should be ineffective because two of the three examiners on the conference may already be predisposed against the applicant’s position. That is, the examiner who issued the most recent Office Action typically will not admit that his work product is faulty. Nor will the examiner’s supervisor, especially when the working examiner is junior and the supervising examiner has been involved in overseeing the Examiner’s work. So common wisdom would suggest that a third Examiner, even if on the same side as the appellant, would have a hard time winning over the other examiners.
But these pre-appeal brief requests for review have significant effects on the state of prosecution of the application. One study showed that 6% result in a notice of allowance and 33% prosecution gets reopened (see www.ipwatchdog.com/2015/07/21/efficacy-pre-appeal-brief-conference-program/id=59937/). This means that almost 40% of the time the conference found that the Examiner’s Office Action was defective in some way.
Next is the appeal conference. Here, similar to the pre-appeal request for review conference, three examiners meet to evaluate the application in light of the appeal brief. Interestingly, a study showed that 19% receive notices of allowance after appeal brief. And 21% of these cases have prosecution reopened with an Office Action. (see www.ipwatchdog.com/2016/03/21/ex-parte-appeals-quickallowances/id=67297/) This shows that 40% of the time, the appeal conference examiners did not feel comfortable sending this appeal to the Board.
These data show that even before having patent judges at the PTAB give an application a fresh look, having other a pair of fresh eyes from examiners leads to meaningful results. The take home lesson is that having another pair of fresh eyes to evaluate an Examiner’s rejections is very important. Then, if necessary, the judges can also give the application a fresh look. That is, if it clears either of the 40% filters.