USPTO May Add PTAB Judges to Patent Appeal Conferences
A patent applicant who challenges an examiner’s rejection may now encounter a Patent Trial and Appeal Board judge before the appeal ever reaches a PTAB merits panel. On September 10, 2026, the United States Patent and Trademark Office announced that an Administrative Patent Judge may serve as the third participant in certain pre-appeal brief conferences and appeal conferences.
The change moves Board-level experience earlier in the prosecution process, but it does not convert an examiner conference into appellate review. The APJ’s role is advisory, the examiner and supervisory patent examiner retain the relevant signatory authority, and an APJ who participates in a conference cannot later sit on the panel that decides the same ex parte appeal.
For applicants weighing whether to appeal a rejection, the practical lesson is straightforward: a concise, record-based argument may receive scrutiny from someone who regularly decides patentability disputes at the Board. That makes issue selection and briefing discipline especially important.
What changed on September 10, 2026?
Under the USPTO’s September 10, 2026 notice, an APJ with sufficient experience in the relevant technology may participate as the third member of either of two internal conference panels:
- a pre-appeal brief conference, requested by the applicant after a notice of appeal and before the appeal brief; or
- an appeal conference, conducted after the USPTO accepts the applicant’s appeal brief and before an examiner’s answer is prepared.
The Office described the change as a way to provide real-time input about the strengths and weaknesses of the issues and to share best practices between the examining corps and the Board. APJ participation is possible, not automatic. The notice does not give an applicant the right to demand that an APJ join a particular conference.
The names of the panelists appear on the resulting notice or examiner’s answer. If an APJ participates, the judge’s name and title should therefore be visible in the written record.
Pre-appeal and appeal conferences happen at different stages
Although their names sound similar, the two conferences serve different procedural purposes.
The pre-appeal brief conference
The Pre-Appeal Brief Conference Pilot Program offers an applicant a relatively early review of the legal and factual bases for a rejection. The applicant must file the conference request on the same day as the notice of appeal and before filing an appeal brief. There is no separate fee for the request, although the notice-of-appeal fee still applies.
The request must be focused. Its supporting argument is limited to five pages and should identify a clear error in a rejection rather than reargue the entire prosecution history. The program addresses appealable matters, not petitionable issues, and it is not a vehicle for submitting an after-final amendment.
The applicant does not attend the conference. The panel may conclude that the application should remain under appeal, that prosecution should reopen, that the application is allowable, or that the request does not comply with the program’s requirements. If the appeal continues, the time for filing the appeal brief is reset under the procedures described in MPEP § 1204.02.
The appeal conference
An appeal conference occurs later, after the applicant files an acceptable appeal brief. Under MPEP § 1207.01, the conference is generally mandatory unless the examiner and supervisory patent examiner decide the appeal should not go forward—for example, because prosecution should reopen or the application should be allowed.
Historically, the conference participants included the examiner preparing the answer, the examiner’s supervisor, and another experienced examiner. The new procedure permits a qualified APJ to substitute for that third conferee. If the rejection is maintained, the examiner prepares an answer responding to the appeal brief.
Neither conference is the same as an oral hearing or a decision by a three-judge PTAB panel. Tucker Law’s Patent Trial and Appeal Board practice overview explains the Board’s broader role, which includes both appeals from examiner rejections and adversarial post-grant proceedings. An ex parte application appeal is also distinct from an inter partes review, where a third party challenges claims in an issued patent.
What an Administrative Patent Judge can—and cannot—do
The APJ brings appellate experience to the conference, but the September notice draws a clear boundary around that role. The APJ advises the primary examiner and supervisory patent examiner. The judge does not independently decide the rejection, issue a Board opinion, or replace the later merits panel.
That distinction matters in at least three ways.
First, the conference result remains an examination-stage action. If a rejection survives and the appeal proceeds, the applicant still receives the ordinary appeal process, including the opportunity for Board review.
Second, the participating APJ is screened from any later PTAB panel deciding that appeal. This separation helps preserve the independence of the merits panel.
Third, if a rejection is withdrawn after the conference, APJ participation does not transform the outcome into PTAB appellate review. The USPTO also states that this participation does not create patent term adjustment for appellate-review delay under 35 U.S.C. § 154(b).
When a pre-appeal request may be worth considering
A pre-appeal request is most useful when an applicant can isolate a potentially dispositive problem that fits within a short submission. Examples may include a reference that plainly lacks a claim limitation, a claim construction that conflicts with the specification, or a legal rationale that does not support the stated rejection. The strongest request usually directs the panel to specific claim language, findings, and portions of the cited record.
By contrast, the procedure may be a poor fit when the dispute requires extensive explanation, new evidence, claim amendments, or development of several overlapping issues. A five-page limit rewards selectivity. Trying to compress every disagreement from prosecution into the request can obscure the point most likely to change the outcome.
Timing is unforgiving. The request must accompany the notice of appeal. It cannot be corrected and resubmitted later merely because it was noncompliant. Filing an appeal brief, request for continued examination, amendment, affidavit, other evidence, or an express abandonment before the panel acts will terminate the pre-appeal review.
Applicants should therefore decide on a conference strategy before filing the notice of appeal, not after. Counsel can compare a focused pre-appeal request with other prosecution options through a broader patent application and prosecution strategy.
How applicants should prepare under the new procedure
The possibility of APJ participation should not change the governing law, but it may change the audience. Applicants should write as if a Board-experienced reader could examine the record at the conference stage.
That means identifying the narrowest issue capable of resolving the rejection, stating the applicable legal standard accurately, and tying every important assertion to the claims, specification, prosecution history, or cited prior art. Arguments should explain not only why the examiner is wrong, but why the error changes the result.
Applicants should also preserve consistency between the pre-appeal request, appeal brief, and any later reply. An argument that depends on an unstated claim construction or an unsupported characterization of a reference is unlikely to improve simply because an APJ joins the conference. A disciplined record is valuable whether the case returns to examination or proceeds to the Board.
After the conference, review the written notice carefully. The outcome determines the next deadline and may reveal whether an APJ participated. If prosecution reopens, consider whether the new Office action actually resolves the disputed issue. If the appeal continues, use the panel’s disposition to sharpen the appeal brief rather than simply repeat the pre-appeal paper.
The practical takeaway
The USPTO’s September 10 update creates a new opportunity for Board experience to influence an application before a formal appellate decision. It does not guarantee a different result, and it does not replace careful prosecution. Its value will depend on the issue, the record, and how effectively the applicant presents a concise basis for reconsidering the rejection.
Tucker Law assists inventors and businesses with patent prosecution and proceedings involving examiner rejections and the PTAB. If your application is approaching a final rejection or appeal deadline, contact Tucker Law to evaluate the available procedural paths before filing.
This article provides general information and is not legal advice. Patent appeal strategy depends on the claims, prosecution record, deadlines, and circumstances of each application.
