Pre-Appeals Just Got More Appealing

By Anthony D. Marino

Bottom Line for In-House Counsel: On September 10, 2026, the U.S. Patent and Trademark Office (USPTO) issued an Official Gazette notice permitting a Patent Trial and Appeal Board (PTAB) Administrative Patent Judge (APJ) to sit as a third panelist on pre-appeal brief conference panels and to substitute as the third conferee at appeal conferences. USPTO, Update to Panels for Pre-Appeal and Appeal Conferences (Sept. 10, 2026). The APJ serves “only in an advisory role to the examiner of record with signatory authority,” and the notice takes care to state that an APJ’s participation “is not appellate review by the Board.” That disclaimer is accurate as far as it goes, but the change does something the pre-appeal process has not done in its 21 years as a pilot program: it seats someone on the panel who has no stake in the rejection under review. For patent teams managing prosecution budgets, that makes the cheapest procedural option in the ex parte appeal process considerably more attractive, and it is most attractive in the cases that now make up a growing share of the average docket (new examiners without signatory authority).

Patent Appeal Process

When an examiner issues a final rejection, the applicant has a choice: file a notice of appeal and proceed directly to briefing, or (at no extra cost) simultaneously file a five-page Request for Pre-Appeal Brief Review. The pre-appeal request triggers a pre-appeal brief conference (MPEP § 1204.02), where a panel of examiners reviews the rejection before the applicant invests in a full appeal brief. If the panel decides the rejection stands, the applicant then files the brief, which in turn triggers the appeal conference (MPEP § 1207.01). Only after that conference does the case move to the PTAB for a formal appeal.

The key distinction is timing: the pre-appeal brief conference is optional and occurs before briefing; the appeal conference is automatic and occurs after briefing.

What the September 10 Notice Does

The notice makes two structural changes and adds two disclosures to the patent prosecution appeal process.

For the pre-appeal brief conference, the panel convened on a properly filed request “may further comprise” a PTAB APJ as a third panelist. The APJ joins the existing reviewers here rather than displacing one. Panelist names will now be listed on the Notice of Panel Decision from the Pre-Appeal Brief Review form.

For the appeal conference, the change is a substitution. Current guidance under MPEP § 1207.01 calls for three participants: the examiner charged with preparing the examiner’s answer, a supervisory patent examiner (SPE), and another examiner serving as a conferee. Under the notice, an APJ “having sufficient experience to be of assistance” in considering the merits may substitute as that third conferee. The APJ’s name and title will appear on the examiner’s answer, and the MPEP § 1207.01 requirement that conferees initial by their names is waived for APJs for logistical reasons.

Two guardrails accompany the change. First, to preserve the impartiality of PTAB panels, an APJ who serves as a conferee for an application will not sit on the PTAB panel that issues the ex parte appeal decision in that same application. Second, where the examiner withdraws a rejection following a conference, the APJ’s presence does not convert the examiner’s decision into a PTAB decision and will not trigger patent term adjustment (PTA) under 35 U.S.C. § 154(b)(1)(C). The update is “effective until further notice.”

Why the PTAB Has Capacity to Lend

The USPTO offers institutional reasons for the change: input for the examiner on the strengths and weaknesses of the appellant’s arguments as the conference happens, a better understanding by APJs of how examination works, and the prospect of improved practices at the appeals stage. All of that is plausible. The timing, though, also reflects a supply issue.

The PTAB’s docket has contracted sharply. After institution authority was centralized at the director level and discretionary denials became routine, inter partes review petition volume fell to historic lows, and the ex parte appeal inventory fell with it. PTAB leadership reported roughly 1,866 pending ex parte appeals as of March 31, 2026, a level last seen when the PTAB was still the Board of Patent Appeals and Interferences. Average pendency at the PTAB has also dropped from about 28 months in May 2025 to about nine months. A tribunal with that much slack has time to lend.

For in-house counsel, the more useful question is how long the program lasts. It exists in part because the PTAB has room, and it can recede when that room disappears. The notice is candid on the point: it operates until further notice, with no rulemaking and no comment period. Applicants should plan around the window while it is open.

The Home-Field Problem

On paper, the pre-appeal brief conference has always been an appealing proposition. No fee beyond the notice of appeal. A five-page cap, no amendments, no new evidence, and a decision that can end a rejection months before anyone drafts an appeal brief. The weakness was in who decided. MPEP § 1204.02 requires that the reviewing panel include “at least a supervisor and the examiner of record,” and MPEP § 1207.01 staffs the appeal conference with the examiner, an SPE, and another examiner. See U.S. Patent & Trademark Office, Manual of Patent Examining Procedure §§ 1204.02, 1207.01 (9th ed. Rev. 07.2022).

Every mandatory seat has historically been filled from the same art unit and the same reporting chain of examiners as the rejection under review. The applicant has no seat at all because MPEP § 1204.02 provides that the appellant “will not be permitted to attend the review” and that no interviews are granted before the decision issues, and the decision itself usually arrives without reasoning.

Adding an APJ does nothing about the applicant’s absence, but it changes who sits across from the examiner from their immediate coworkers and supervisors to someone who has much less invested in the outcome beyond correct application of the law.

The Real Upside for Non-Primary Examiners

Junior examiners do not hold signatory authority. The USPTO’s signatory authority program runs roughly 18 months and involves intensive review of at least 34 Office Actions, with full primary status following later still. Until an examiner clears that bar, the final rejection a client appeals carries the signature of a primary examiner or an SPE, and that signatory then sits on the pre-appeal panel in the SPE slot.

So, before this notice, a pre-appeal panel in a junior-examiner case could consist entirely of people who had already blessed the rejection: the examiner who drafted it, the supervisor who signed it, and, when the optional seat is filled, their coworker from the same Technology Center who may have consulted on the Office Action. The fresh pair of eyes the program was initially designed to deliver had been clouded before the request was ever filed. Compare the primary-examiner case, where the examiner signed his or her own action and the SPE joining the panel is at least a comparatively new set of eyes. The value of adding an outside panelist is therefore highest precisely where the examiner of record is not a primary.

Then there is candor. A junior examiner’s performance rating, promotion timeline, and path to signatory authority all run through the SPE in that room, and disagreement is expensive in a two-person conversation with one’s own supervisor. A third voice from outside the reporting chain, with no production credit, no allowance-rate exposure, no Technology Center affiliation, and no supervisory relationship to anyone at the table, changes that dynamic.

The fact pattern is also becoming more common. The examining corps numbers roughly 9,000, and the FY 2026 budget contemplates hiring approximately 1,500 more. Hiring has run well above historical levels (USPTO staffing data reflect 923 examiner hires in FY 2024 alone), and Director John A. Squires reported in April 2026 that the Office was “about halfway to our aggressive goal for new examiner hires.” Every one of those hires spends years in the pipeline before signing an Office action. As the share of appealed rejections drafted by non-signatory examiners grows, so does the share of cases in which an APJ on the panel is the only independent reviewer a client will get.

The Appealing Arithmetic

The second reason to want an APJ in the room is calibration.

Most appeals never reach the PTAB. USPTO figures presented at the PTAB’s ex parte appeal outreach sessions indicate that, across 2010 to 2020, only about 43 percent of appeals produced an examiner’s answer. The rest were resolved at the pre-appeal or appeal conference stage through allowance or reopened prosecution. Most appeals are therefore decided in a conference room rather than in a written PTAB decision.

Of the appeals that do reach a decision, a substantial fraction do not survive. The USPTO’s published PTAB Appeal Statistics for April 2026 report 57.2 percent affirmed, 9.1 percent affirmed-in-part, and 33.1 percent reversed. The May 2026 figures report 61.3 percent affirmed, 8.0 percent affirmed-in-part, and 29.8 percent reversed. Close to one in three decided appeals ends in outright reversal. Published analyses of PTAB decisions have separately documented a marked increase in the reversal rate for § 101 rejections since late 2025 against the prior baseline.

An examiner weighing whether to defend a rejection is estimating and betting on those odds. An APJ, on the other hand, has both those numbers and a better grasp of the legal standards: whether the examiner established a prima facie case, whether official notice was properly supported, whether an obviousness rejection rests on “articulated reasoning with some rational underpinning,” see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), and whether findings about well-understood, routine, and conventional activity have evidentiary support. Getting that assessment at the conference, nine months before it would otherwise arrive in a written decision, is most of what the change is worth.

Appealing, but Not Appellate: The PTA Carve-Out

In-house counsel focused on patent term should read the notice’s PTA language closely, because it forecloses an argument some applicants would otherwise have made.

The notice states that where the examiner withdraws a rejection following a conference attended by an APJ, that participation is not appellate review by the PTAB, will not render the examiner’s decision a PTAB decision, and will not trigger the PTA delay provisions of 35 U.S.C. § 154(b)(1)(C). See 37 C.F.R. §§ 1.702(e), 1.703(c).

The position tracks existing law. So-called C-delay is available only where delay is due to appellate review by the PTAB or a federal court “in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability.” 35 U.S.C. § 154(b)(1)(C)(iii); see also 37 C.F.R. § 1.702(e). In Chudik v. Hirshfeld, 987 F.3d 1033, 1039 (Fed. Cir. 2021), the Federal Circuit held that no C-delay accrues where the examiner reopens prosecution after a notice of appeal, because the PTAB’s jurisdiction never attaches and no reversal by the PTAB or a reviewing court ever issues. An examiner’s change of heart, however welcome, is not an appellate decision.

For portfolio planning, the change improves the odds of winning early without the client paying for winning early. Where term drives value, as with a pharmaceutical asset, a standard-essential position, or a late-filed continuation, the calculus may still favor pressing through to a PTAB decision instead of accepting a withdrawal at the conference.

What the Notice Does Not Change

Several limits deserve attention. The applicant still has no seat at the table: no attendance, no interviews before the panel decision, and pre-appeal decisions that continue to issue without stated reasoning. There is no request mechanism either, so applicants cannot ask for an APJ, cannot decline one, and have no published criteria for when one will be assigned. The appeal conference provision is qualified by “sufficient experience,” which the notice leaves undefined.

Advice also runs in both directions. An APJ can tell an examiner that a rejection will not survive, and an APJ can just as easily identify the support a thin rejection needs or help sharpen an examiner’s answer. The notice itself contemplates collaboration that benefits the Office, and applicants should expect some share of that benefit to flow away from them.

Recusal carries a cost as well since APJs who participate in this program are excluded from later PTAB panels for the same application. Screening the conferee APJ off the later PTAB panel narrows the pool of available judges, which is felt most in thinly staffed technical areas. And the program remains revocable: “effective until further notice” means no rulemaking, no comment period, and no vested expectation.

Practical Guidance for Patent Teams to Consider

Companies that long ago wrote off the pre-appeal conference as a low-odds formality have reason to revisit that judgment. The request is still five pages, still free, and still due with the notice of appeal. What has changed is who reads it.

***Opinions expressed are those of the author and those quoted, and not necessarily the firm’s or their colleagues’.