PTAB Judges Join Panels for Pre-Appeal and Appeal Conferences

On September 10, 2026, the United States Patent and Trademark Office issued an update to its pre-appeal and appeal conference procedures. Specifically, Patent Trial and Appeal Board Administrative Judges (APJs) may now participate as members of pre-appeal brief conference panels and appeal conference panels. This update has the potential to bring appellate-level insight into the prosecution process earlier and provide examiners with real-time feedback on the merits of appeal arguments prior to cases reaching a formal PTAB decision.

Under the USPTO’s Pre-Appeal Brief Conference Pilot Program, an applicant may request review of the legal and factual bases of the rejection(s) in an application prior to the filing of an appeal brief. The former provisions of the pilot program specify that applications receiving a properly filed pre-appeal request are reviewed by a panel including the examiner of record and at least one supervisory examiner. 

In practice, most panels include the examiner of record, the supervisor of the examiner of record, and another supervisory examiner; however, some panels only include the examiner of record and the supervisor of the examiner. This update now allows the third panelist to be an APJ broadening out the possible participants for the panels. This update also affects the participating panelists of appeal conferences.

The updated guidance indicates that an APJ with “sufficient experience to be of assistance in the consideration of the merits of the issues on appeal” may participate in the panel in an advisory capacity. In addition, an APJ who participates in a pre-appeal or appeal conference for a particular application will not later sit on the PTAB panel that decides any ex parte appeal in that same application. 

Finally, the USPTO clarified that APJ participation at the conference stage does not constitute PTAB appellate review and therefore does not trigger patent term adjustment provisions associated with PTAB decisions. 

Practical Implications

For patent practitioners, this update may increase the strategic value of both pre-appeal requests and appeal conferences. Because an APJ may now review the merits of the arguments before a case proceeds to formal appellate review, practitioners should consider:

• Ensuring that pre-appeal requests clearly identify legal or factual errors in the rejection.
• Presenting concise, well-supported appeal arguments that are likely to resonate with examiners and APJs.
• Evaluating whether election of a pre-appeal conference could reduce appeal costs and time costs to the client.

While it remains to be seen how frequently APJs will participate as panelists, this change signals the USPTO’s interest in increased collaboration between examiners and the PTAB, potentially resolving issues more efficiently and improving the quality of appeal outcomes.

If you have any questions about the issues raised in this alert, please contact the authors or the Womble Bond Dickinson attorneys with whom you normally work.