Should I File a Notice of Appeal and Pre-Appeal Brief Conference? Episode 63
- Adam Diament
- Mar 20
- 4 min read
Overview of Appeal Options
In the last couple of episodes, I talked about various ways to respond to a final office action. The first of those episodes provided a general overview, followed by an episode on Requests for Continued Examination (RCE). In this episode, I’m going to discuss a pilot program that might be helpful: the Pre-Appeal Brief Conference.
An RCE keeps the application with the same examiner, while a full appeal goes to a panel of judges who can overturn the examiner’s decision. A pre-appeal conference is somewhat of a hybrid between these two options. It is particularly useful if you believe the examiner is making a mistake that could be easily overturned.
Filing a Notice of Appeal and Pre-Appeal Brief Conference Request
For the pre-appeal conference, you must first file and pay for a Notice of Appeal. The Notice of Appeal is a one-page form (PTO AIA 31). It is straightforward—it simply notifies the USPTO that you are appealing your rejection to the Patent Trial and Appeal Board (PTAB) and that you are paying the required fee.
The current (2019) fees for filing a Notice of Appeal are:
$200 for a micro-entity
$400 for a small entity
$800 for a large entity
In addition to the Notice of Appeal, you must submit a Pre-Appeal Brief Request for Review. This is also a one-page form that states that you are filing a notice of appeal and that you are submitting a pre-appeal brief (which must be no more than five pages).
Advantages of the Pre-Appeal Conference
A full appeal can take more than a year before your case is heard, whereas a pre-appeal conference decision typically takes 45 days or less.
Success Rates and Challenges
The downside is that most pre-appeal conferences do not result in an allowance. The most recent statistics indicate that only about 14% to 33% of cases result in allowance after the pre-appeal conference.
One reason the success rate is low is that the review panel consists of three patent examiners, one of whom is your current examiner. The other two are typically the supervising examiner and another examiner. Since your examiner has already decided to reject your claims, and the supervising examiner may have already reviewed them, the odds are stacked against you.
Restrictions on Pre-Appeal Briefs
Unlike an RCE, you cannot amend your claims in a pre-appeal brief. Instead, you must argue for patentability, usually focusing on non-obviousness or errors in how the examiner applied prior art.
Possible Outcomes of a Pre-Appeal Conference
Four things can happen after a pre-appeal conference:
Allowance – The panel finds that the rejection was improper, and your application is allowed.
Rejection Maintained – The panel upholds the rejection, meaning you must proceed with a full appeal to the PTAB if you wish to continue.
Reopening of Prosecution – The panel determines that prosecution should be reopened, meaning a new office action will be issued to address additional issues.
Non-Compliance Notice – If your submission fails to comply with the requirements (e.g., exceeding five pages, failing to pay the fee, or amending claims), your request will be denied.
Strategies for Writing a Strong Pre-Appeal Brief
Since you are limited to five pages, you must be concise and focus on the big issues.
If your examiner ignored a key limitation in your claims, this is a strong point to highlight. For example, if your invention includes features A, B, C, D, and E, but the examiner’s rejection only addresses A, B, C, and D, you should argue that Ewas completely overlooked. This may convince the panel to reopen prosecution to address this oversight.
Another strong argument is if the examiner improperly issued a final rejection. Typically, the second office action is final, but if the examiner introduced new reasons for rejection that were not in the first office action and were not in response to an amendment you made, then the rejection should not have been final. This argument can sometimes get prosecution reopened.
Limitations of the Pre-Appeal Conference Decision
One major downside of the pre-appeal process is that the decision panel usually does not provide any rationale for their decision. If prosecution is reopened, you may not know exactly what issue convinced the panel, but you can infer it based on your strongest argument.
What to Do if Your Appeal Is Denied
If the panel decides that the issues are appealable and you must proceed with a full appeal brief, you have several options:
Proceed with the full appeal brief – I will cover this process in the next episode.
File a Request for Continued Examination (RCE) – This removes your application from the appeal route and reopens prosecution with the examiner.
Abandon the application – If you no longer wish to pursue the patent.
File a continuation application – This allows you to file a new application while letting your original application go abandoned.
Timing Considerations
A pre-appeal brief conference can also buy you additional time before filing a full appeal brief.
For example, if you receive a final rejection, you typically have three months to respond without paying extension fees. At the three-month mark, you can file a Notice of Appeal, which gives you two more months to file your appeal brief. However, if you also file a pre-appeal brief, you do not need to take further action while waiting for the decision.
If the decision is issued within 45 days, you then have one additional month to file your appeal brief without paying additional fees. This effectively extends your deadline to 2.5 months after filing the Notice of Appeal. The rule is two months from the Notice of Appeal filing or one month from the decision, whichever is later.
Final Thoughts
Navigating appeals can be complex, and I do not recommend doing it alone. If you are at the stage of filing an appeal brief, it is in your best interest to work with a patent attorney. I’m Adam Diament, and until next time—keep on inventing!
