英文 |  日文 |  各地分所 |  联系我们 |  网站说明 |  首页 
新闻中心
FILING A PRE-APPEAL BRIEF AND REQUEST FOR REVIEW PROVIDES ANOTHER "BITE AT THE APPLE"

On November 15, 2010, the United States Patent & Trademark Office (USPTO) published statistics regarding the Pre-Appeal Brief and Request for Review (Pre-Appeal) practice that started in 2005. This article examines the current trends with respect to Pre-Appeals and also discusses factors that an Applicant should consider when deciding whether to file a Pre-Appeal.

Briefly, a Pre-Appeal may be filed in an application after the application has been rejected twice. The Pre-Appeal includes a maximum of five pages of argument. Upon receipt of the Pre-Appeal, a panel of at least two Examiners, including the Examiner of record in the case, conduct a Pre-Appeal conference in which the arguments presented in the Pre-Appeal are reviewed. The conclusion of the conference results in one of four outcomes: (1) re-opening of prosecution; (2) maintaining the rejection of all claims; (3) issuance of a notice of allowance; or (4) rejection of the Pre-Appeal as being defective.

Table 1 shows a summary of the Pre-Appeal Statistics collected by the USPTO.

Table 1

FY Number of Pre-Appeal Brief Conference Requests Percent of Appeals Proceed to Board Reopen Prosecution Withdraw Rejections Defective Request
2006 6,525 24% 55% 37% 5% 3%
2007 7,240 25% 56% 38% 4% 2%
2008 8,255 27% 59% 37% 2% 2%
2009 9,967 30% 56% 39% 3% 2%
2010 12,019 34% 56% 38% 5% 1%

Based on the above statistics, Pre-Appeals are successful approximately 42% of the time. A Pre-Appeal is considered successful if either (1) prosecution is re-opened or (2) all rejections are withdrawn. Based on this statistic alone, Applicants have a strong incentive to file a Pre-Appeal. Not only does the Pre-Appeal have a relatively high success rate, the Pre-Appeal process is a cost effective and time efficient mechanism for having the Examiner’s rejection and the Applicant’s arguments reviewed by at least the Examiner’s supervisor.

Further, in the event that the Pre-Appeal is unsuccessful, the Applicant still has an opportunity to pursue a formal appeal. In such cases, the Applicant may also see benefits in the form of reduced costs of filing the formal appeal, as the arguments presented in the Pre-Appeal may also be presented in the formal appeal. In effect, by filing the Pre-Appeal, the Applicant is given an early opportunity to have a “first bite at the apple” and, if unsuccessful, still have a “second bite at the apple” during the formal appeal process.

When considering whether to pursue an appeal directly or to first pursue a Pre-Appeal, Applicants should be mindful that the Pre-Appeal process may delay issuance of a patent by 2-3 months in the event the Pre-Appeal is unsuccessful and the case proceeds to a formal appeal. However, with the current average appeal pendency at 29 months, and a relatively high success rate on Pre-Appeal, it may be worth a potential delay of 2-3 months to file a Pre-Appeal and have an opportunity to bypass the formal appeal process in its entirety.
 

◎2011 Osha Liang LLP |  休斯顿  |  巴黎  |  硅谷  |  东京  |  奥斯汀