On September 10, 2026, the USPTO issued an Official Gazette notice, Update to Panels for Pre-Appeal and Appeal Conferences, that lets Administrative Patent Judges (APJs) of the Patent Trial and Appeal Board (PTAB) take part in the examiner-level conferences that precede an ex parte appeal decision. The change took effect on issuance and remains in place until further notice. It does not alter any substantive standard of patentability. But it changes who may be reviewing an applicant’s arguments at two of the most important decision points before the Board ever takes the case. Applicants with a final rejection pending, or an appeal already in progress, should factor it in now.
What Changed
The notice makes two targeted changes to the composition of conference panels. It does not replace the existing procedures; it expands who may sit on them.
- Pre-appeal brief conferences – Under the Pre-Appeal Brief Conference Pilot Program (MPEP § 1204.02), an applicant may request review of the legal and factual bases of a rejection by a panel of examiners before filing an appeal brief. Until now, a supervisor selected the panel, which included at least the supervisor and the examiner of record. Typically, the panel further included a third examiner with signatory authority. Under the notice, that panel may now also include a PTAB APJ as a third panelist. Participating panelists are identified on the Notice of Panel Decision from Pre-Appeal Brief Review form.
- Appeal conferences – When an applicant files an acceptable appeal brief according to 37 CFR 41.37, an appeal conference is mandatory unless the examiner, with a supervisory patent examiner’s (SPE) approval, determines that the appeal should not go forward and instead reopens prosecution or allows the application (MPEP § 1207.01). The conference participants ordinarily include the examiner charged with preparing the examiner’s answer, a SPE, and another examiner serving as conferee. Under the notice, an APJ having sufficient experience to be of assistance may substitute as that third conferee. If the rejection is maintained, the examiner prepares the answer and the APJ conferee is identified on it by name and title; the usual requirement that conferees initial their names is waived for an APJ.
Limits on the APJ’s Role
The notice builds in three safeguards that define an APJ’s conference role:
- Advisory only – An APJ participates solely in an advisory capacity. Signatory authority stays with the primary examiner of record. The notice creates no right to APJ participation and changes no patentability standard. An APJ may be added as a third panelist for a pre‑appeal conference and an APJ may substitute for the examiner‑conferee as the third participant for an appeal conference. Absent an APJ, the third conferee remains an examiner under MPEP § 1207.01. An APJ named on an examiner’s answer is identified by name and title to indicate actual participation in the conference; only the initialing requirement is waived.
- No seat on the merits panel – To preserve impartiality, an APJ who serves as a conferee for an application will not sit on the PTAB panel that later decides that application’s ex parte appeal.
- No patent term adjustment – Because conference participation is not appellate review by the PTAB, an examiner’s withdrawal of a rejection following a conference is not a PTAB decision and does not trigger the patent-term-adjustment delay provisions of 35 U.S.C. § 154(b) (see 37 C.F.R. §§ 1.701(a)(3), 1.702(e)).
Why It Matters
The practical effect is to put a Board-level view of the record into the examiner’s decision earlier, before the applicant has paid for a full appeal and waited out the Board’s docket. The USPTO expects an APJ conferee to give the examiner real-time input on the strengths and weaknesses of the appellant’s arguments, and anticipates that the resulting collaboration will produce better practices at the appeals stage.
However, the effect cuts both ways. The same experienced perspective that can expose a weak rejection can also help an examiner strengthen one or identify a better-supported new ground of rejection. A conference informed by an APJ may make it marginally more likely that strong rejections are maintained and better defended in the examiner’s answer, not just that weak ones fall away. The change is therefore best understood as an opportunity for more informed internal review, not a new avenue of appeal or a thumb on the scale toward allowance.
Practical Takeaways
- Reconsider the pre-appeal request for clear, self-contained errors. The pre-appeal procedure remains best suited to a focused, demonstrable defect. For example, a claim limitation the cited art does not teach, or a rejection that lacks articulated reasoning, rather than a sprawling multi-issue dispute. Because the request is short, make every point tight and frame it in the terms the Board itself applies. The prospect of a judge on the panel rewards precision.
- You cannot request an APJ. The notice says only that a panel “may” include an APJ and gives applicants no mechanism to ask for one. You will learn after the fact, from the Notice of Panel Decision or the examiner’s answer, whether one participated.
- Write the appeal brief to be Board-ready from the first page. The brief may now be read critically by an APJ at the conference stage, not only by the eventual merits panel. Lead with the strongest ground of error, distinguish the claims from the cited art with specific record citations, and address each ground directly. Arguments omitted from the brief are generally waived before the Board (and the Federal Circuit in any further appeal), so completeness still matters.
- Read an APJ-attended examiner’s answer as a signal. If an APJ is listed as a conferee and the rejection survived, that advisory review is useful information when deciding whether to file a reply brief, request an oral hearing, or pivot to continued examination. But the APJ’s views are not on the record, that APJ will not decide the appeal, and the Board reviews the examiner’s rejection on the appeal record.
- Weigh patent term for term-sensitive assets. A withdrawn rejection after an APJ-attended conference does not generate the patent term adjustment that a Board reversal can. For most applications, earlier allowance is still the better outcome; for assets where term is critical, decide before the notice of appeal whether pressing for a Board reversal is worth the added time.
- Use interviews before the notice of appeal. The applicant does not attend either conference. Where an after-final interview is available, use it to narrow the issues so that any conference reviews a clean, well-developed record.
Bottom Line
Adding APJs to conference panels is a meaningful procedural development, not a fundamental shift in patent prosecution. It does not change the legal standards on appeal, but it does change who may be scrutinizing an applicant’s arguments well before the Board formally takes the case. The prudent response is unchanged in principle but sharper in execution: identify strong candidates for pre-appeal review, build focused and evidence-based arguments, treat every appeal brief as a document a judge may read at the conference, and make deliberate decisions about when to amend and when to appeal.
The underlying change is set out in the USPTO’s Official Gazette notice, Update to Panels for Pre-Appeal and Appeal Conferences (Sept. 10, 2026); see also MPEP §§ 1204.02 and 1207.01.
