Note: Lay-person explanation below.
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We had a lecture on Appeal Briefs today. It was especially interesting in light of the proposed rules package (as mentioned on just-n-examiner’s blog).
To the presenter (who asked): Yes, this was the class with the blogger, yes, I was there today, and yes, you did a fine job presenting. Thank you for taking the time out to speak with us. I haven’t mentioned it in a while, but I still do appreciate the work of the speakers who come to talk to us. For the most part, they are energetic people who seem to enjoy both teaching and the subject matter.
I think we went into just enough detail for an intro to the topic: we covered the periods for reply, what is required and optional for an appeal brief, and the (very) basics of the Examiner’s Answer. Since writing an Examiner’s Answer is going to be so far off into the future for most of us, it probably wouldn’t make sense to go into to too much more detail than we did today.
I do have a question about Pre-Appeal Briefs for the practitioners out there: I see a lot of comments on JPE’s site about the cost of appeal briefs, only to have examiner’s reopen prosecution after the brief has been filed. In our class, we discussed the Pre-Appeal Brief option, which seems to allow applicants to provide a very short pre-appeal brief which would be reviewed by a panel to see if prosecution should be reopened, or if the case should go to the board. Is this option used? Do practitioners find it to be effective? From my naive perspective, it makes me wonder why there’s still a problem with examiners reopening prosecution after an appeal brief.
Layperson explanation: When an examiner rejects claims twice, applicants can appeal to the Board of Patent Appeals and Interferences. This is applicant’s first avenue for judicial relief if applicant feels that the Office is not properly rejecting their claims. When applicants want to appeal, they are required to submit an Appeal Brief, which is very, very costly for applicant. Examiners then must write an Examiner’s Answer in reply to the Appeal Brief.