When an Examiner twice or finally rejects an application, the applicant has the right to appeal to the Patent Trial and Appeal Board (PTAB). This enables the applicant to have a panel of three administrative law judges (ALJs) review the rejection to determine if it is proper. Unfortunately, sometimes it can be hard to actually get to the PTAB when the USPTO re-opens prosecution responsive to an appeal brief and present new rejections. Sometimes, the USPTO repeatedly reopens prosecution, requiring an Applicant to file two or three or more appeal briefs before finally sending the case to the PTAB.
Some argue that re-opening of prosecution responsive to an appeal brief or pre-appeal request, is a good result. For example, Fazio and Gaudry argue in the context of pre-appel requests (where 39% of such requests result in direct allowance (6%) or re-opening of prosecution (33%, with more than half of those being ultimately allowed)), taking such action provides a good return on investment. The argument is that re-opening of prosecution can focus the Examiner's next action on better prior art, thus making a stronger patent in the end. While true, the fact remains that the Applicant had to endure a significant extra burden to reach a result they should have had in the first place.
In the context of re-opening prosecution responsive to an appeal brief, the Applicant has had to bear a significant burden, only to effectively start over. While approval by a supervisory examiner is required for reopening prosecution after appeal brief (MPEP 1207.04), such additional review seems to be no barrier at all. Moreover, some Examiners re-open prosecution repeatedly. I have had numerous cases requiring multiple consecutive appeal briefs before obtaining an allowance or Examiner's Answer. While a call to the Ombudsman was finally effective in a case having three appeal briefs as well as a reversal by the PTAB, such extreme cases should not occur in the first place. And common occurrences of less extreme, but still unfair, re-opening of prosecution should be addressed.
To better understand the nature of the problem, I have filed a FOIA request with the USPTO requesting data over the past year of how the USPTO has responded to appeal briefs. More to come once the data has been analyzed.