During patent prosecution at the USPTO, when an applicant is unsatisfied with rejections from an examiner (and claims are either twice rejected or under final rejection), the applicant can appeal to the Board (PTAB). The appeal requires filing a notice of appeal, along with an appeal brief. However, after filing the appeal brief, the case is still with the examiner and, if the examiner is going to continue to stand by the current rejections, an appeal conference is held. As explained by MPEP § 1207.01:
An “appeal conference is mandatory in all cases in which an acceptable brief (MPEP § 1205) has been filed. However, if the examiner charged with the responsibility of preparing the examiner’s answer reaches a conclusion that the appeal should not go forward and the supervisory patent examiner (SPE) approves, then no appeal conference is necessary. In this case, the examiner may reopen prosecution and issue another Office action or may prepare a notice of allowability if appropriate.
Forgetting that this language is confusing (the conferencing being “mandatory in all cases” yet then explaining a case where it is not necessary), the MPEP goes on to explain the makeup of the examiner panel:
The participants of the appeal conference should include (1) the examiner charged with preparation of the examiner’s answer, (2) a supervisory patent examiner (SPE), and (3) another examiner, known as a conferee, having sufficient experience to be of assistance in the consideration of the merits of the issues on appeal.
And, the Examiner’s answer must designate the name of the conferee. However, beyond this, the MPEP does not give any further details on the conferee selection.
However, from the available data, most often the conferee is another examiner or supervisor in the art unit or a closely related art unit. Alternatively, in a minority of cases, the conferee is a QAS (quality assurance specialist), such as an RQAS (Review Quality Assurance Specialist). As discussed in previous posts, the RQAS works in the Office of Patent Quality Assurance and has various functions outside of appeals, including reviewing examiner work products that form the basis for the compliance rate reviews, Complete First Action on the Merits (FAOM) Reviews and FAOM Search Reviews. According to the USPTO:
RQAS are experienced Primary Patent Examiners and former Supervisory Patent Examiners, whose examining experience is in the general area of the Technology Center whose applications they are assigned to review. RQAS are responsible for performing timely, substantively and procedurally sound reviews. RQAS are required to be thoroughly familiar with all patent examination tools, and to keep abreast of the latest patent rules and regulations. RQAS must record their error findings and provide supporting documentation so that the TC can assess the validity of any proposed error finding. Each team of RQAS is supervised by a Supervisory Quality Assurance Specialist (SQAS). SQAS are experienced former Supervisory Patent Examiners who ensure that reviews performed by the RQAS are substantively and procedurally accurate. Review findings are used to identify quality issues and OPQA resources and data are used to support quality improvement programs within the Patent Corps.
So, having a QAS as one of the conferees would seem to imply that the examiner’s rejections have been reviewed by a true expert and are of high quality (by definition), and thus there should be high certainty (or at least a substantially greater chance) that the rejections will be affirmed by the PTAB.
But does the data bear this out? Clint Mehall has run the numbers (see HERE) and the data is surprising – overall there is a only a marginal difference in affirmance rates between cases where an RQAS signed off on the answer and cases without an QAS. Check out his blog to see the data, including the breakdown by Technology Center.
Overall, the data indicates that the applicant should not put much stock in whether or not a QAS has signed off on an examiner’s answer. However, in some technology centers, QAS participation is almost non-existent, while in others it is substantial. Further, in one art unit, QAS participation actually increases the chance of an applicant win! At the same time, there are some art units where QAS participation does show a substantial improvement in examiner wins, and so an applicant should consider this data when receiving an Answer with a QAS conferee.
Perhaps the USPTO management should review this data to evaluate effective, or ineffective, QAS performance.