SARPABR – Should it be added to your patent vocabulary?
The Pre-Appeal Brief Conference (the “Conference” ) is a relatively new tool available to applicants and their representatives. Started as a pilot program on July 12, 2005, the Conference procedure has since been extended indefinitely, or “until further notice.”
The procedure provides applicants an opportunity to request that a Panel of Examiners formally review the legal and factual basis of rejections before filing an Appeal Brief. The panel includes the Examiner of record, his or her supervisor, and other Examiners experienced in the particular art.
To initiate the Conference procedure, one must file a Request for Pre-Appeal Brief Review (the “Request”) along with a Notice of Appeal. Amazingly, a fee separate from the Notice of Appeal fee is not required. Additionally, a Statement Accompanying the Request for Pre-Appeal Brief Review (the “Statement” or “SARPABR” . . . yes folks, you heard it here first) must be submitted along with the Request. The Statement must be 5 pages or less in length and specify either:
1.) clear errors in the Examiner’s rejections; or
2.) the Examiner’s omissions of an essential element needed for a prima facie rejection.
Upon review by the panel, which the PTO states should occur within 45 days of receipt of the Request, the panel will issue 1 of 4 decisions. These decisions include the following:
1.) The application remains under appeal because there is at
least one actual issue for appeal;
2) Prosecution on the merits is reopened and an appropriate Office communication will follow in due course. In appropriate circumstances, a proposed amendment may accompany the panel’s decision proposing changes that, if accepted, may result in an indication of allowability for the contested claim(s);
3.) The application is allowed on the existing claims and prosecution remains closed; or
4.) The request fails to comply with the submission requirements and is dismissed.
The early results from the pilot program (at approximately 1000 Requests filed) indicate that the PTO has decided not to proceed with the appeal process 57% of the time! However, the results also show that, early in the program, fewer than 20% of Notices of Appeal filed included a Request for Pre-Appeal Brief Review.
One might be apprehensive that panel members will support or give more weight to a fellow Examiner’s decisions (especially since he/she sits on the panel). However, I believe the early statistics paint a different picture. I believe stats support an argument that the Panels are objectively looking at the evidence and not being overly influenced by the Examiner of record.
The PTO cautions that this procedure should not be used as a substitute for the Appeal process, and is particulary not suitable for resolution of issues lacking factual basis (interpretations and claim scope). However, a practitioner should strongly consider using the Conference procedure when it is believed that the Examiner has made a clear error in facts, and in particular where it is stongly believed that a prima facie case has not been established.