By: Jessica Zilberberg

With all the talk of overworked PTAB judges, it is no wonder that the average pendency of an appeal from an Examiner’s final rejection of claims is over a year. Fortunately, the USPTO offers a “Pre-Appeal Request for Review”—a procedure meant for more time- (and potentially cost-) efficient disposition of straightforward appeal issues. When an appeal is filed, the appellant must file the notice of appeal and an appeal brief within two months of the notice of appeal.[1] Then, a conference is scheduled with the Examiner responsible for the final rejection, her Supervisory Patent Examiner, and another Examiner to discuss the pending rejections.[2] After the conference, the Examiner either submits her Examiner’s Answer or reopens prosecution. If the former, the appellant can file an optional Reply Brief and must pay the mandatory appeal forwarding fee.[3] Finally, the case is queued for PTAB review.

Straightforward issues may be decided at the conference stage—basically, once there is a “second set of eyes” on the rejection. The Pre-Appeal procedure allows an appellant to trigger this conference more immediately, by filing the appropriate form and a Pre-Appeal Brief along with the Notice of Appeal and appeal fee. For example, the USPTO suggests Pre-Appeal where the pending rejections are “improper or without basis” or “based on legal or factual error.”[4] On the other hand, a full appeal is recommended where the pending rejections amount to a prima facie case, but further evidence or interpretation of the claims is required to analyze the rejection.[5] The pre-appeal brief is limited to five pages—it should be succinct and focused.[6] In other words, if your argument requires more than five pages to develop, the case is likely not well-suited for a Pre-Appeal. Though there is no deadline by which the conference must occur, the time to conference is generally on the order of a few months.

The possible outcomes of a Pre-Appeal are essentially: (1) the Examiner reopens prosecution and either issues a new rejection or a Notice of Allowance, or (2) the Examiner recommends proceeding to the PTAB. What are the odds? Almost 40% of pre-appeals go the way of option (1). [7] Unfortunately, the USPTO does not break this statistic down any further, to show how many Pre-Appeals result in allowance rather than a new rejection. Still, it is interesting to compare the figure to another tidbit—prosecution is reopened in only 25% of cases that are appealed directly to the PTAB. Of course, the difference can be at least partially attributed to self-selection (many Pre-Appeal are likely filed where there is a high chance prosecution would be reopened during an appeal). Still, it seems Pre-Appeals seem to do their job of ultimately putting an appellant back at reopening of prosecution in cases that should really not proceed to the PTAB—and with the upsides of lower costs and shorter wait times, Pre-Appeals can be a useful tool to combat the right rejections.

[1] 37 CFR 41.31; 41.20(b)(1); 41.37.

[2] 37 CFR 41.39; MPEP 1207.01

[3] 37 CFR 41.45, 41.20(b)(4), 41.41.

[4] These statistics are from Technology Center 2800.

[5] Id.

[6] MPEP 1204.02