I've filed two requests for a pre-appeal brief conference with mixed results. One request resulted in an allowance and the other resulted in a finding that at least one appealable issue remained.

The problem I have with the finding of an appealable issue is that the decision does not provide any explanation of why or what appealable issue was unearthed by the panel. The Patent Office states that the procedure is intended to be used where counsel feels that the rejection clearly lacks a legal or factual basis to establish the prima case. That being the case, an explanation of the panel's finding of an appealable issue in contravention to counsel's own determination that an appealable issue is not present should at a minimum be required to be set forth in the panel's decision.

I'm also not sure about the utility of the procedure. In the past, I would simply seek a three party Interview between the recalcitrant examiner, myself and his Supervisor. The Supervisory normally takes the lead during the Interview and (usually) arrives at the right outcome. Although I realize the pre-appeal conference is meant to provide a formal mechanism for counsel to seek supervisory oversight I wonder about the overall benefit to Applicant since the conference is ex parte.

I'm also not convinced that this procedure will significantly reduce costs. The office fee for filing a Notice at present for large entities is $500 while the cost for an RCE is $790. Depending on the service charges, the difference in cost to Applicants in preparing the Request for a pre-appeal brief conference versus a RCE may not be significant. Moreover, should a finding of an appealable issue be found and Applicant not choose to pursue an appeal, Applicant will be confronted with a charge for an RCE.