2006-01-15 05:09:20 UTC
Committee. Accordingly, they have returned a decision to open the
application for examination. Administratively, when I call the
supervisor for a decision, I was told my application was wrongly filed
by USPTO and it was 2 days before christmas. So, make sure you call
them as soon as you filed one and follow up. It finally took them until
4 Jan to have the conference and a decision on 6 Jan but I could only
see it on PAIR on the 10 Jan ( not sure why ?). Lately I notice mailing
room records and PAIR details are not sync but thats another issue.
I asked the supervisor whether I could continue the appeal (ie file the
appeal brief) instead of waiting for the next action letter. Anwyay, I
got a negative response and I am wondering if this is correct.
The authority in 35 USC 134 (a) - An applicant for a patent, any of
whose claims has been twice rejected, may appeal from the decision of
the administrative patent judge to the Board of Patent Appeals and
Interferences, having once paid the fee for such appeal, which
basically means applicant has legal basis to continue filing an appeal
regardless of the outcome.
In particular, at para 7 (New Pre-Appeal Brief Conference Pilot Program
Page) and I quote "Applicant's period for filing the appeal brief or
other appropriate response ends on the mailing date of a panel decision
that indicates all claims are allowed or that prosecution is reopened.
" I could not find any authority that provides a basis for this as it
effectively abrogate the applicant rights to submit the appeal brief
without any recourse.
My reason for this stems from the financial cost which is having paid
250 for a notice of appeal cum pre-conference, I am now back in square
one again and having to wait for another 3 months for another action
letter. And if I find the action letter is not meritorious, I have to
file another 250 to file second notice, assuming the first appeal fee
is now lapsed. If another pre-conference is required then this could in
theory go back to opening for examination as the outcome. In a way
pre-conference seems to be a good circuit breaker for USPTO but not so
for applicant who just want the matter to reach some kind of finality.
I suppose that is why applicant opt for appeal instead of abandonment.
Not sure if any estoppel will be raised here since it could mean by
being silent ( allowing the matter back to square one) , I am agreeing
to the Appeal Committee's decision which by the way place no
reasoning on record. In short, had I not use the pre-appeal conference,
I need only to spend 500 in total to get finality (albeit a longer
time). In this case, if the next action letter is not meritorious and I
choose to ignore any further Pre-Appeal Conference, the total cost of
reaching a finality is 750 (assuming there is no further rise in fees).
In short it may be the case where having 3 independent people looking
at it is better serve than having 3 where at least one (the examiner)
has an interest to sustain the status quo.
My feedback is the pre-conference appeal would be better serve to
include some kind of feedback by the committee and to allow a refund
where the case is re-open or in allowance given this must evidence some
serious issue on the part of earlier action letters. Other than this, I
am not sure if there is any incentive at all for applicants, in
particularly where one mistakenly provides ammunition to the USPTO to
response at appeal by raising issues found in the pre-appeal
submission, which in most cases is a mini appeal brief.
Anyone else having experience with Pre-Appeal Conference ? Would I do
it the next time ? Probably not.