Pre brief appeal conference law office of david mcewing, p. The program, known as the postprosecution pilot program or p3, combines features of two existing after final programs, the preappeal brief conference pilot program preappeal program and the after final consideration program afcp 2. The usptos preappeal brief conference pilot program was introduced in july of 2005. Ppt appeal practice before board of patent appeals and.
Interference decisions interferences are handled by the interference section of the trial division. The p3 program is billed as being similar to the preappeal conference but it adds an oral argument to the mix and the office promises a meaningful explanation of the decision. If the application has been rejected at least two times, the applicant can file a notice of appeal. New preappeal brief conference pilot program, 1296 og 67 july 12, 2005.
Office 67 july 12, 2005 but not the results of appeal conferences, of which there are more than 25,000 per year. Not every final rejection, however, is appropriate for a preappeal conference. The program, known as the postprosecution pilot program or p3, combines features of two existing after final programs, the pre appeal brief conference pilot program pre appeal program and the after final consideration program afcp 2. For 61% of the nondefective requests, the panel decided that there was an actual issue for appeal, such that.
Pre appeal brief conference effects in 2005, the u. For example, if a request for a pre appeal brief conference is filed with a notice of appeal, the time period set in 37 cfr 41. A preappeal brief conference is a winning strategy, even if. Jul 10, 2016 the p3 program provides for i an after final response to be considered by a panel of examiners like the pre appeal brief conference, ii an after final response to include an optional proposed amendment like the afcp 2. A preappeal brief conference is a winning strategy, even. Jan 12, 2017 the usptos preappeal brief conference pilot program was introduced in july of 2005. Applicant submits arguments and proposed non broadening amendments to claims. In february of 2006, the uspto extended the preappeal brief conference pilot program until further notice. A free powerpoint ppt presentation displayed as a flash slide show on id. For those not familiar with the preappeal brief conference pilot program, the uspto describes it as follows. Prior to the p3, inventors whose patent applications were rejected could pursue pre appeal actions under the pre appeal brief conference pilot program, which allowed for a panel to consider a. Overview of pre appeal practice appeals are available to applicants after their claims have been twicerejected by an examiner e.
For example, if a request for a preappeal brief conference is filed with a notice of appeal, the time period set in 37 cfr 41. What is the difference between preappeal brief request for. The pre appeal brief conference program appears to have shifted that decisionmaking process forward. Extension of the pilot preappeal brief conference program, 3 og 21 feb. As discussed below, clever applicants can use the preappeal brief conference pilot program hereinafter the pilot program to help reduce pendency and unnecessary prosecution expenses. In july 2005, the pto initiated its preappeal brief conference pilot program. Whether the pre appeal brief conference program speeds up the application process depends upon. The p3 program provides for i an after final response to be considered by a panel of examiners like the preappeal brief conference, ii an after final response to include an optional proposed amendment like the afcp 2.
It was designed to solve a problem wherein applicants would prepare an. It was designed to solve a problem wherein applicants would. If applicants and practitioners know what really occurs within the u. The preappeal brief conference request and notice of appeal must be filed on the same date. I intend to respond to the office action, but i want to make sure that the examiner will not reopen prosecution again if i need to file a second appeal brief. Patent and trademark office uspto introduced the pre appeal brief conference conference. You may elect to file a pre appeal brief conference request that must not include claim amendments and have no more than 5 pages of argument regarding 35 usc 101, 102, 103, and 112 issues. Whether the preappeal brief conference program speeds up the application process depends upon. Notice of appealpreappeal conference and appeal brief fees. For over ten years, applicants have taken advantage of the preappeal brief conference pilot program introduced by the united states patent and trademark office uspto on july 12, 2005. Understanding the appellate preargument conference ct. Taking advantage of the postprosecution pilot program 2016. Pre brief appeal conference law office of david mcewing.
I am planning to put together my comments on the new program, but would like to solicit your comments as well. Patent and trademark office uspto introduced the preappeal brief conference conference. Prior to the pre appeal brief conference program, a majority of appeals cases never reached the board because the rejections were withdrawn after the applicant filed its formal brief. It was designed to solve a problem wherein applicants would prepare an expensive and timeconsuming appeal. Celebrating the 10th anniversary of the uspto preappeal. The time period for filing an appeal brief is extendible under 37 cfr 1. For example, new arguments andor amendments may be able to resolve prosecution in a timely and satisfactory manner without an appeal. I dont necessarily blame the examiners for this, since finding a teaching, suggestion or motivation to combine is a pretty convoluted and factspecific concept in patent law a question of law. A pre appeal brief request may be most effective where the perceived impropriety of a final rejection can be clearly argued in writing by the applicant in 5 pages or less.
The new postprosecution pilot p3 program resources. See preappeal brief conference pilot program, 1296 og 67 july 12, 2005 and extension of the pilot preappeal brief conference program, 3 og 21 february 7, 2006. In the majority of cases the patent claims of the application are rejected. The cias human behavior control program was chiefly motivated by perceived soviet, chinese, and north korean use of mind control techniques. However, if the examiner charged with the responsibility of preparing the examiners answer reaches a conclusion that the appeal should not go forward and the supervisory patent examiner spe approves, then no appeal conference is necessary. The preappeal brief conference program appears to have shifted that decisionmaking process forward. You may elect to file a preappeal brief conference request that must not include claim amendments and have no more than 5 pages of argument regarding 35 usc 101, 102, 103, and 112 issues. I want to file a notice of appealpreappeal conference or an appeal brief when the first notice of appealpre appeal conference and appeal brief was filed at steps 2 and 3, all fees have been paid. The uspto has implemented the postprosecution pilotreferred to as the p3 program.
Instead, the notice discusses the result of a preappeal brief program that pto instituted in 2005 see new preappeal brief conference program, 1296 off. Effective features of two programs currently aimed at improving this area of prosecution, 1 the after final consideration pilot afcp 2. Understanding the appellate pre argument conference pre argument conference handbook this presentation describes the appellate pre argument conference, which provides an opportunity for parties who have filed an appeal in the supreme or appellate court to explore settlement and resolution. Prior to the preappeal brief conference program, a majority of appeals cases never reached the board because the rejections were withdrawn after the applicant filed its formal brief. Employed as a patent engineer, andrew prepared over onehundred u. Not every final rejection, however, is appropriate for a pre appeal conference. In every civil case except one originating in family court in which a notice of appeal is filed or an order granting leave to appeal to the appellate division entered, or an order transferring an article 78 proceeding to the appellate division is entered, counsel for the appellant or petitioner shall file, together with the above, a preargument statement.
I will not publish your name on the blog unless you give permission in the email. There is a twist, however, that can lead to a rigged board. The postprosecution pilot p3 program combines features of the preappeal brief conference and after final consideration afcp 2. A preappeal brief request may be most effective where the perceived impropriety of a final rejection can be clearly argued in writing by the applicant in 5 pages or less. This program does not apply to reexamination proceedings. Prior to the p3, inventors whose patent applications were rejected could pursue preappeal actions under the preappeal brief conference pilot program, which allowed for a panel to consider a.
New preappeal brief conference pilot program rethinkip. Prosecution had already been reopened once before, after a preappeal brief conference following an earlier notice of appeal. Overview of preappeal practice appeals are available to applicants after their claims have been twicerejected by an examiner e. The goal of the program is to reduce the need for appeals by providing a more robust after final, preappeal program. Prosecution had already been reopened once before, after a pre appeal brief conference following an earlier notice of appeal.
Request must be submitted within 2 months of final rejection and prior to filing notice of appeal procedure. Preappeal brief pilot program preappeal brief pilot 1296 off gaz pat. To investigate the empirical data behind the preappeal brief conference program or preappeal program, we submitted a freedom of information act request to the uspto. Department of commerce under the paperwork reduction act of 1995, no persons are required to respond to a.