I have previously posted on what happens after an appeal brief (here and here) and what happens after a pre-appeal conference decision of “proceed to appeal” (here). An astute reader pointed out, however, that I didn’t address one of the most frustrating scenarios: the scenario in which you get a “proceed to appeal” decision and then prosecution is reopened after you file your appeal brief.
So how often does this happen? It certainly feels like it happens a lot. But maybe it feels like it happens more than it does because it is so frustrating?
The chart shows that roughly 10% of such appeal briefs are followed by an allowance and 10% result in prosecution being reopened In other words, in 20% of cases it’s “proceed to appeal not!!!“
Jokes aside, whether that 20% is too high is hard to say without knowing the content of the pre-appeal brief conference requests and the appeal briefs (you can of course lookup a bunch of them on BigPatentData). Anecdotally I have had numerous cases that fell in the 20% despite the the pre-appeal conference request and the appeal brief being essentially identical.1 But I am sure there are many others in that 20% where the appeal brief was much different than the pre-appeal request.
That 20% is why, as I have mentioned before, I often file an appeal brief after a “proceed to appeal” decision, even if I am the one telling the NOT! joke (that is, I don’t intend to actually go to the board).
1protip: the pre-appeal request guidance doesn’t say anything about line spacing, and I have never had a pre-appeal conference request rejected for being single-spaced to overcome the paltry 5 page limit.