IP: When and how to use pre-appeal briefs

Pre-appeal requests can overturn an examiner’s rejection, but should be used judiciously

When faced with a final rejection, a pre-appeal brief conference request (pre-appeal request) can be an effective tool to overturn an examiner’s rejection. However, to be effective the pre-appeal request must be concise and targeted. It is important to remember that pre-appeal requests are not intended to cover all situations and thus, pre-appeal briefs should be used judiciously. 

Timing

A pre-appeal request can be made in an application that has claims that have been rejected twice. This stems from the requirement that a notice of appeal must be filed along with the pre-appeal request and pre-appeal brief. If the claims have not been rejected twice, a notice of appeal is not proper and the pre-appeal request should be denied. Additionally, the pre-appeal request can only be filed in applications where there are either:

  1. Clear errors in the examiner’s rejections
  2. The examiner’s omissions of one or more essential claim elements that are needed to establish a prima facie rejection of the claims

Thus, it is important to understand and appreciate the rejection of the examiner to determine whether at least one of the criteria has been satisfied.

Determination of clear error or omission

Deciding whether to file a pre-appeal request requires a determination of whether clear error or an omission exists. In making this determination, one must decide if a clear argument can be made on the pending claims that does not rely upon claim interpretation.  Another way of viewing this is whether a panel of examiners can review the claims and arguments and easily determine whether at least one of the conditions has been satisfied.   

Filing procedures

A pre-appeal request must state a reason why the review is appropriate, and be filed along with a notice of appeal and a pre-appeal brief, which is limited to five pages. The five-page limit can be difficult, thus each of the arguments needs to be persuasive and concise. The pre-appeal cannot include any amendments. If any of these conditions is not met, the Patent and Trademark Office will reject the request as being improper. Once the pre-appeal request is filed and accepted, a panel is appointed that includes at least a supervising examiner, another examiner and the examiner of record. The panel reviews the pre-appeal request and relevant documents, and reaches one of three conclusions:

1) Allow the appeal to proceed to the Board of Patent Appeals and Interferences (BPAI)

2) Allow the application

3) Reopen prosecution

When the decision to reopen prosecution is made, the examiner can upon further consideration allow the application, but no immediate action is required from the applicant. However, if the decision is made to proceed to the Board of Patent Appeals and Interferences, then the applicant should revisit other strategies as well. 

Conclusion

In some applications in which the claims have been twice rejected, a pre-appeal request can be appropriate. It is important to conclude that no amendments should be filed either to overcome the current rejection or to place the claims in better form. If that decision is reached, then a careful consideration of whether the rejection contains a clear error or omission that another examiner would recognize should be made. If all of the conclusions are in favor of filing a pre-appeal request, it is important to meet all of the requirements for filing the request.

 

Contributing Author

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Andrew Weaver

Andrew Z. Weaver is a partner at Novak Druce + Quigg where his practice is focused on the prosecution and reexaminations of patents. He can be reached...

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