As discussed in previous posts, re-opening prosecution responsive to an appeal brief is an all too common occurrence at the USPTO. The Federal Circuit recently affirmed the USPTO’s unfettered ability to do so under MPEP 1207.04 in Hyatt v. USPTO (2008). We’ve discussed MPEP 1207 in several previous posts (listed here).

While there is not much one can do to stop the USPTO from re-opening prosecution, there are some things one can do to maximize leverage for the applicant when it happens. Some of these actions need to happen even before you file your appeal brief, and even before you file your first response (even if it is merely a restriction response!).

One possible strategy is illustrated with the following example, where we pick up things after the applicant receives what they believe to be a clearly improper rejection in a first action. Let’s assume the applicant took advantage of an interview with the examiner and their supervisor to explain why they believe the rejection is improper. Not surprisingly, and as is often the case, the examiner and supervisor stick to their guns and do not give up much. The applicant then files a response with these same arguments and receives, not unexpectedly, a final rejection. The applicant then tries yet another interview to no avail and lets the examiner and supervisor dig their hole even deeper. The applicant might even press the examiner and supervisor at this point and unsurprisingly they will likely commit that there is no way the current claims could overcome the current rejection. The applicant proceeds with an appeal and then, low and behold, prosecution is re-opened with a new rejection. At this point, the applicant again makes use of an interview. Except this time, the interview goes a little differently. The Applicant can make a compelling case of unfairness - despite the fact that they went through the same arguments during two separate interviews, and despite the fact that the examiner and supervisor expressly refused to back down and instead confirmed that they would not be convinced, it turns out indeed they have now admitted their previous rejections were improper.

In my experience, during this last interview, there is a lot of awkward silence. However, at this point the examiner and supervisor can be very willing to find a way forward, sometimes without the applicant even having to file a response to the most recent office action.

So, while re-opening prosecution responsive to a strong appeal brief is usually frustratingly unfair, make sure to take advantage of any leverage it might provide.