Imagine That IP Law Blog

What the change may mean for patent applicants

A pre-appeal brief conference can offer a relatively inexpensive opportunity to challenge a patent rejection before preparing a full appeal brief. In my practice, however, we rarely recommend one unless the record presents a particularly clear error. A focused five-page request may produce only a check-box decision indicating that the application should proceed to appeal, leaving the applicant with little insight into how the panel evaluated the arguments.

A recent USPTO change gives applicants a reason to take another look. In a Notice dated September 10, 2026, the Office authorized administrative patent judges (APJs) from the Patent Trial and Appeal Board (PTAB) to participate in pre-appeal brief conferences and appeal conferences. Their participation is optional, but it creates an opportunity for appellate input before a rejection reaches the Board.

What changed?

A pre-appeal brief conference panel includes at least the examiner of record and a supervisor. The notice permits an APJ to serve as a third panelist. At the later appeal-conference stage, after an applicant files an acceptable appeal brief, an APJ having sufficient experience to assist in considering the merits may substitute for the third conferee. The Notice does not explain how an APJ will be selected for either type of conference, nor does it establish a procedure through which an applicant may request APJ participation. Under the existing framework, a supervisor designates the pre-appeal panel, so APJ involvement appears to remain an internal, discretionary staffing decision. Although the Notice identifies relevant experience as a consideration for appeal conferences, the Office has not published any additional selection criteria. Until further guidance is provided, applicants should not assume that filing a pre-appeal request will result in APJ participation.

The APJ serves only in an advisory capacity. Decision-making authority remains with the primary examiner or supervisory patent examiner with signatory authority. A participating APJ cannot later serve on the PTAB panel deciding the appeal in that application.

The Notice also provides for identifying participating APJs in the pre-appeal panel decision or examiner’s answer, as applicable. Their participation does not turn either conference into a PTAB proceeding or make an examiner’s withdrawal of a rejection a PTAB decision for patent term adjustment purposes.

Why might it matter?

The practical value is the possibility of having someone accustomed to evaluating rejections on appeal assess the arguments while the examining corps can still resolve the dispute.

For example, an applicant may have repeatedly argued that a cited reference does not disclose a claimed limitation or that an obviousness rejection lacks a supported reason to combine the references. An APJ’s perspective could help the conference distinguish a rejection worth defending from one that needs further examination.

That is a potential benefit, rather than an established result. The Notice does not promise more allowances, fewer appeals, or a substantive written explanation of the panel’s reasoning. Whether the change improves the procedure will depend on how often APJs participate and how their input affects conference decisions.

Which cases warrant another look?

The pre-appeal program remains best suited to a clear legal or factual deficiency that can be explained within five pages. It is less suited to disputes requiring extensive claim interpretation or further development of the evidentiary record.

For example, a request may be useful where:

• A cited reference plainly lacks a claimed limitation.
• A rejection rests on a demonstrably incorrect factual premise.
• An obviousness rejection omits an adequately supported rationale for the proposed combination.

The existing procedural limits also matter. The request must accompany the notice of appeal, although it carries no separate USPTO fee beyond the notice-of-appeal fee. Applicants do not attend the conference, and the procedure focuses on the existing record rather than providing an opportunity to submit amendments or new evidence. There is also no assurance that an APJ will participate in a particular case.

The decision should ultimately turn on the value of the disputed claim scope. If an amendment would surrender coverage of a commercial product, an industry standard, or a competitor’s technology, a focused challenge to the rejection may justify the additional cost. If an amendment would resolve the rejection while preserving the scope that matters to the business, continued prosecution may be more efficient.

What should applicants watch?

The most useful measure will be whether APJ participation helps resolve disputes earlier. Patent teams can track the participating panelists, the issues presented, and whether the conference leads to reopened prosecution, allowance, or continued appeal. Reopened prosecution should be evaluated separately from allowance: it may avoid an immediate appeal brief without ending the dispute.

For now, pre-appeal review selectively should be continued to be used selectively. The new option does, however, strengthen the case for considering it when the record presents a clear error and the claim scope is worth defending.

Sources

• USPTO, Update to Panels for Pre-Appeal and Appeal Conferences (September 10, 2026)
• MPEP § 1204.02, Pre-Appeal Brief Review Request and Conference Pilot Program
• MPEP § 1207.01, Appeal Conference