The Untouchables

Applicants have limited ability to obtain review of the actions of Primary Examiners.  The classic option is to file an Appeal.  Applicants often overlook the significance of the initial appeal conference.  In that conference, the Office Action is reviewed by (1) a Supervisory Patent Examiner (SPE) and (2) a Quality Assurance Specialist (QAS), Appeal Specialist, or other Primary Examiner.  Admittedly, only one of these other 2 Examiners needs to agree with the application’s Primary Examiner for the appeal to proceed.  However, these other 2 Examiners sometimes instruct the first Primary Examiner to reopen prosecution or allow the application.

Another option is the Pre-Appeal Brief Conference.  In theory, the Conference is identical to the aforementioned Appeal Conference.  In practice, there are two key distinctions.  First, the Pre-Appeal Brief Program is intended to address clear errors in facts, not “interpretations of the prior art teachings or claim scope.”  1296 OG 67 (July 12, 2005).  So, most obviousness rejections should not be traversed via the Pre-Appeal Brief Program.  Second, I have heard anecdotally from a former Examiner that some Art Units view the Pre-Appeal Brief Conference as a mere formality.  Thus, in those Art Units, an Examiner might simply issue the resulting form, without the Pre-Appeal Brief Conference actually occurring.

Applicants also can consider the Ombudsman Program.  This Program should only be used after contacting both the Primary Examiner and the SPE.  This Program does allow for review of applications on the merits.  However, I recommend using it only for egregious behavior, such as an Examiner repeatedly reopening prosecution after the filing of an appeal brief to prohibit the application from proceeding to appeal.

Finally, the Post-Prosecution Pilot (P3) Program also allowed for such review.  In particular, the P3 Program convened a panel similar to the Pre-Appeal Brief Conference.  However, the Applicant’s representative presented comments directly to the panel, ensuring Applicants the panel actually occurred.  Unfortunately, the P3 Program has been discontinued.

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