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Global Intellectual Property Academy Advanced Patents Program. Kery Fries, Senior Legal Advisor Mark Polutta, Senior Legal Advisor Office of Patent Legal Administration. PRE-APPEAL BRIEF CONFERENCE PRACTICE. 1296 Off. Gaz. Pat. Office 67 (July 12, 2005)
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Kery Fries, Senior Legal Advisor
Mark Polutta, Senior Legal Advisor
Office of Patent Legal Administration
1296 Off. Gaz. Pat. Office 67 (July 12, 2005)
1303 Off. Gaz. Pat Office 21 (February 7, 2006)
OVERVIEW & TIPS FOR PRACTICE
Pre-Appeal Brief Conference
Notice of Appeal
Anyone who is filing a
Notice of Appeal
(except under patent reexamination)
WHEN Can It Be Requested?
ONLY WITH the Notice of Appeal
of the Final Rejection
Clearly Show the Errors
To the Examiner in an
After Final Communication
Before Filing Notice of Appeal
You may narrow the focus of the conference to claims you select as having clearly erroneous rejections.
However, consider beginning preparation of an Appeal Brief for the claims unselected for conference early on.
Request Pre-Brief Appeal Conference on Selected Rejections
A request for a Pre-Brief Conference submitted before or after the notice of appeal will be dismissed as untimely
At present, there is no fee for the request.
The fee for the Notice of Appeal remains.
The fee for the Notice of Appeal is non-refundable, even in the event of a favorable outcome from the Pre-Appeal Brief conference.
It is suggested, but not required,
that you use the PTO Form
PRE-APPEAL BRIEF REQUEST FOR REVIEW
On the www.uspto.gov web site
Go to Index and select Forms to access the Forms page
Omissions of element essential for a prima facie case in Examiner’s Rejection
Clear Errors in Examiner’s Rejection
Reference’s date is clearly not an anticipatory date
No motivational statement is provided in a 103 rejection
A claim element that is clearly not present in applied art is not included in the examiner’s analysis
No evidentiary basis for a 103 motivation is provided in the rejection
Support in the disclosure is clearly found contrary to a 112(1) rejection
Inventive entity is clearly not one to which reference can be applied
Examples of what NOT to argue because the panel will consider it more appropriate for consideration during appeal --
Reference’s construction of terms differs from claims
Secondary considerations or teaching away in 103 rejections
A claim element is not in applied art although the examiner has shown where it is so asserted to be in the rejection
Unseasonable traversal of evidence by administrative notice
Characteristics of POSITA* rendering 103 improper
Dictionary definitions of terms at odds with rejection
*Person of Ordinary Skill In The Art
No analysis will accompany the decision – appellant provides analysis and conferees agree or disagree
Generally, decisions will be made and mailed within 45 days of receiving the request.
Usual time extensions may be obtained by fee
If One Month Will Be Insufficient To Prepare An Appeal Brief, Consider Whether the Complexity of the Issues Really Does Require BPAI Level Consideration.
You may obtain extensions of time with fee.
The procedure is under pilot study beginning July, 2005
It will be re-evaluated at the termination of the pilot study.
The procedure may be requested with any Notice of Appeal EXCEPT those for reexamination proceedings.
Amendments and Affidavits with or after Notice of Appeal Terminate Any Pre-Appeal Brief Conference Proceedings.
Any RCE, continuation, or abandonment,
any Appeal Brief, any amendment,
any affidavit, or any other form of evidence, submitted after making a request for a pre-appeal brief conference, will cause the request to be dismissed.
An IDS having no bearing on the request may be submitted, but will not be considered by the panel
No supplemental arguments will be accepted.
Supplemental replies will not be entered or considered in the proceedings.
No applicant or applicant representative participation or attendance is permitted in a Pre-Appeal Brief Conference
Whenever you have a clear case, you should.
If the application is going to appeal or be subject to RCE anyway, requesting a conference only delays the process and adds your time and expense of preparing the request. If you do not have a clear case, you will likely be filing an appeal brief anyway.
Even if you have a solid argument as to error, you are better off making it first in an after final amendment to the examiner, prior to requesting a conference. You may avoid even needing a conference.