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Questions and Answers related to the Pre-Appeal Brief Conference Pilot Program

In July of 2005, the United States Patent and Trademark Office (USPTO) established a pilot pre-appeal brief conference program that offers a patent applicant an avenue to request a review of the legal and factual bases of the rejections in her or her patent application prior to the filing of an appeal brief.  See New Pre-Appeal Brief Conference Pilot Program, 1296 OG 67 (July 12, 2005).  The original pilot program ran for a period of six months.  In February of 2006, the USPTO extended the pre-appeal brief conference pilot program until further notice.  See Extension of the Pilot Pre-Appeal Brief Conference Program, 1303 OG 21 (February 7, 2006).  

A. General Information

Q1.  What is the purpose of the Pre-Appeal Brief Conference Pilot Program?

The purpose of the program is to spare applicant the added time and expense of preparing an appeal brief if a review panel determines an application is not in condition for appeal.  In proper situations, it can save both the resources of the applicant and the Office.

 

Q2.  What are the requirements of a compliant Pre-Appeal Brief Conference Request?

(1) File the request and accompanying arguments in a separate paper titled “Pre-Appeal Brief Request for Review” (Form PTO/SB/33 or equivalent).

(2) Provide in five pages or less, concise, succinct and focused arguments for which the review is being requested.

(3) File the request with the notice of appeal.

(4) File the request without an amendment on same date

(5) Address the notice of appeal and the request to one of the following:

                 - Mail Stop AF

             Commissioner for Patents

             P.O. Box 1450

             Alexandria, VA 22313-1450

 

                - Fax the notice of appeal and the request to the Central FAX Number (571 273-8300)

 

                -  Hand carry the notice of appeal and the request to the

      USPTO Customer Service Window, ATTN: Mail Stop AF

      Randolph Building

             401 Dulany Street

             Alexandria, VA 22314

 

                -  Submit the notice of appeal and the request via EFS-Web.         

 

Q3.  Can the Pre-Appeal Brief Conference Request be filed via EFS-Web?

Yes.  A Pre-Appeal Brief Conference Request is not included on the list of submission types that cannot be filed using EFS-Web.  See Legal Framework for EFS-Web, Section B1 and B2 of Federal Register Notice, Legal Framework for Electronic Filing System-Web (EFS-Web) 74 FR 55200 (October 27, 2009).

 

Q4.  Can applicant file a Pre-Appeal Brief Conference Request in a reissue application?

Yes, a Pre-Appeal Brief Conference Request may be filed in a reissue application.

 

Q5.  Does this program apply to reexamination proceedings?

No.  The program is inapplicable to both inter partes and ex parte reexamination proceedings. 

 

Q6.  How long will the Pre-Appeal Brief Conference Pilot Program continue to run?

In July 2005, the Office established the Pre-Appeal Brief Conference Pilot Program to run for a period of six months.  On January 10, 2006, the Office, citing promising results, extended the program indefinitely. See Extension of the Pilot Pre-Appeal Brief Conference Program, 1303 Off. Gaz. Pat. Office 21 (Feb. 7, 2006).  The Office continues to review the results of the program to determine the overall effectiveness of the program as well as the formal requirements of the program.

 

Q7.  Who do I contact if I have questions on the Pre-Appeal Brief Conference Pilot Program?

For questions concerning the Pre-Appeal Brief Conference Pilot Program, please contact Kery Fries, Senior Legal Advisor by telephone at 571-272-7757, or the Office of Patent Legal Administration by telephone at 571-272-7701; or by email to PatentPractice@uspto.gov.

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B. Timing for Filing the Request

Q8.  When is the proper time to file a notice of appeal and a Pre-Appeal Brief Conference Request?

Pursuant to 37 CFR 41.31, an applicant having claims twice rejected may appeal from the decision of the examiner to the Board of Patent Appeals and Interferences (BPAI).   Accordingly, if the claims have not been twice rejected, the notice of appeal would be premature and the Pre-Appeal Brief Conference Request would be dismissed. 

A claim may qualify as having been twice rejected if the claim was rejected in a parent application and then a claim was subsequently rejected in a continuing application, even if the claim was only rejected once in the continuing application.  See Ex Parte Lemoine, 46 USPQ2d 1420, 1423 (Bd. Pat. App. & Inter. 1994).

 

Q9.  Will the Office decide a request for Pre-Appeal Brief Conference that is filed after the date of a proper notice of appeal?

    No.  The request and notice of appeal must be filed on the same date.

 

Q10.  Will the Office consider the Pre-Appeal Brief Conference Request filed on the same date as a proper notice of appeal if the request is submitted with an amendment after final?

No.  The Pilot program announcement provides that no after-final or proposed amendments may accompany the request.  See Pre-Appeal Brief Conference Pilot Program, 1296 Off. Gaz. Pat. Office 67 (July 12, 2005).  In order to keep the issue(s) narrowly focused, the Office will dismiss any Pre-Appeal Brief Conference Request that is accompanied by an amendment under 37 CFR 1.116.

 

Q11.  If applicant files the Pre-Appeal Brief Conference Request with a proper notice of appeal in one submission and then files an amendment after final in a separate submission on the same day, will the Office consider the amendment to “accompany the request” and thereby not comply with the content requirements?

Yes.  Any amendment pursuant to 37 CFR 1.116 that is filed on the same day as the Pre-Appeal Brief Conference Request, regardless of whether the amendment is filed together with the notice of appeal and request or in a separate submission, will be considered to accompany the request.  Therefore, such a request will not meet the content requirements of the Pilot program.

 

Q12.  The Pilot program announcement provides, “The Office is considering, as part of a more permanent implementation of the pre-appeal brief conference program, permitting applicants to file the request within two months (non-extendible) of the receipt of the notice of appeal for a fee….”  See Pre-Appeal Brief Conference Pilot Program, 1296 Off. Gaz. Pat. Office 67 (July 12, 2005).  Has the Office adopted this procedure?

No, this procedure has not been adopted.  The Office will not decide a request for a Pre-Appeal Brief Conference that is filed after the date of a proper notice of appeal.  The request and notice of appeal must be filed on the same date.

 

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C. Content of the Request

Q13.  How would an applicant substantiate an assertion that the rejection is deficient?

The request should specify:

  •    clear errors in the examiner's rejections; or
  •    the examiner's omissions of one or more essential elements needed for a prima facie rejection.

For example, an applicant faced with an obviousness rejection should concisely point out (i.e., in no more than five pages) that a limitation is not met by a reference. Applicant can refer to arguments already of record rather than reasserting such arguments in the request.  For example, applicant may point to a prior submission by paper number and/or date of submission and the relevant portions thereof (e.g., see response filed xx/xx/xx at pages 4 to 6).

 

Q14.  Does the request page count towards the five (5) page limit on arguments?

No.  The request form (PTO/SB/33) or an equivalent that doesn’t also include argument does not count towards the five-page limit.  Applicant may submit the one-page PTO/SB/33 form and up to five pages of arguments.

 

Q15.  If applicant provides five (5) pages of arguments and one page which is solely a signature page, will such submission be considered compliant as it relates to the five page limit?

Yes.  The sixth page that consists solely of the signature of the requester will not be counted toward the five-page limit and the request will be deemed compliant for purposes of the five-page limit.

 

Q16.  If applicant files five (5) pages of arguments and a sixth page that includes conclusions, will the request be deemed compliant for purposes of the five-page limit?

No.  The Office deems conclusions as argumentative.  Thus, a request that includes five pages of arguments and a sixth page that includes conclusions would be deemed non-compliant.

 

Q17.  If applicant files five (5) pages of arguments and three pages of definitions defining words in the claims, will the request be deemed compliant for purposes of the five-page limit?

No.  The Office deems the definitional pages as arguments that count toward the five-page limit.  Thus, such a request would be deemed non-compliant because it includes a total of eight pages.

 

Q18.  Can the five pages of arguments be single spaced?

Yes.  Presently, the applicant may single space the Pre-Appeal Brief Conference Request.  However, applicant should be mindful of the requirements for papers that are to become part of the permanent United States Patent and Trademark Office records.  Accordingly, the request must comply with the requirements of 37 CFR 1.52(a).

 

Q19.  Can applicant make arguments concerning interpretation of the claims or prior art teachings in the Pre-Appeal Brief Conference Request?

No.  The request should be based on clear legal and factual deficiencies in the rejections.  The program is not intended to review an interpretation of the claims or prior art teachings which are better suited for the traditional appeal process.

 

Q20.  Can applicant file a Pre-Appeal Brief Conference Request to argue that the final rejection was premature?

No.  An applicant who wishes to argue that the final rejection was premature may petition pursuant to 37 CFR 1.181 since the appropriateness of a final rejection is a petitionable matter, not an appealable matter.  See MPEP 706.07(c).  The Pre-Appeal Brief Conference Pilot Program does not affect petitions to invoke the supervisory authority of the Director under 37 CFR 1.181 which are decided outside of the Pre-Appeal Brief Conference Program.

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D. Treatment of the Request

Q21.  How will the Office treat a notice of appeal, a request for a Pre-Appeal Brief Conference and an RCE that are all filed on the same date?

If applicant files a notice of appeal, a Pre-Appeal Brief Conference Request, and an RCE all on the same date, the Office will not consider the notice of appeal or the Pre-Appeal Brief Conference Request. The filing of an RCE includes in this scenario the filing of a reply, thus the application would no longer be under rejection. Applicant cannot file an appeal in an application with an RCE until the application is under rejection, even if such application has been twice rejected prior to the RCE submission.  See MPEP 1204.  Accordingly, the request for a Pre-Appeal Brief Conference will be dismissed.

 

Q22.  If applicant files an amendment under 37 CFR 1.116 prior to submission of a proper notice of appeal and Pre-Appeal Brief Conference Request, will the Office consider the Pre-Appeal Brief Conference Request?

Yes, if applicant submits an amendment under 37 CFR 1.116 prior to the date of the filing of the notice of appeal and Pre-Appeal Brief Conference Request, the Office will consider the Pre-Appeal Brief Conference Request, assuming that all of the other content requirements of the Pilot Program have been met.

 

Q23.  If applicant files an amendment after appeal under 37 CFR 41.33(a) prior to the decision on the Pre-Appeal Brief Conference Request, will the Office continue to decide the Request?

No.  The Pre-Appeal Brief Conference Pilot Program provides that if applicant files an amendment after appeal under 37 CFR 41.33(a) prior to the decision by the panel, the Office will terminate the panel’s review of the request.

 

Q24.  If applicant files a request for continued examination (RCE), an affidavit or other evidence under 37 CFR 41.33(d)(1), or an express abandonment after the filing of a notice of appeal and Pre-Appeal Brief Conference Request but prior to a decision on the request, will the Office continue to decide the request?

No.  The Office will terminate the panel’s review of the request if the RCE, affidavit or other evidence under 37 CFR 41.33(d)(1), or express abandonment is filed prior to a decision by the panel.

 

Q25.  If applicant files a notice of appeal without a Pre-Appeal Brief Conference Request, can applicant file a request to withdraw the first notice of appeal and then submit a second notice of appeal with a Pre-Appeal Brief Conference Request?

No.  Once applicant files a proper notice of appeal, applicant must perfect the appeal by filing the appeal brief within two months of the date of filing the notice of appeal under 37 CFR 41.31.  Appellant cannot request withdrawal of a properly-filed notice of appeal for the purpose of requesting a Pre-Appeal Brief Conference.

 

Q26.  If applicant files a defective notice of appeal and the Office mails a notice titled “Communication Re: Appeal” (PTOL-461) informing applicant that the notice of appeal was defective, can applicant file a compliant notice of appeal and also request a Pre-Appeal Brief Conference?

Yes.  Applicant may request a Pre-Appeal Brief Conference if the request is filed on the same date as the compliant notice of appeal.

 

Q27.  If applicant files a defective notice of appeal accompanied by a compliant Pre-Appeal Brief Conference Request, and the Office mails a notice titled “Communication Re: Appeal” (PTOL-461) informing applicant that the notice of appeal was defective, will the Office consider the compliant Pre-Appeal Brief Conference Request if applicant corrects the defective notice of appeal without resubmitting the request for Pre-Appeal Brief Conference?

No.  Applicant must resubmit the request for Pre-Appeal Brief Conference on the same date as the compliant notice of appeal.  The Office will not waive the requirement that they be submitted on the same date and will not consider a request for Pre-Appeal Brief Conference that is filed prior to a proper notice of appeal.

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E. Decision on the Request

Q28.  Who will review the request to determine whether the request meets the formality requirements for the Pre-Appeal Brief Conference?

The Office has established an Appeal Center to review the formality requirements of the Pre-Appeal Brief Conference Request.  If the request does not meet the formality requirements, the Office will mail a notice titled “Notice of Non-Compliant Pre-Appeal Brief Request for Review” (Form PTOL-462).  This notice will not be considered a panel decision.

 

Q29.  Who substantially reviews the Pre-Appeal Brief Conference Request?

The Technology Center Art Unit supervisor will designate a panel to consider the request.  The panel will consist of at least a supervisor and the examiner of record.

 

Q30.  Can the applicant attend the panel review of the Pre-Appeal Brief Conference Request?

No.  The Office will not permit the applicant to attend the panel review of the request and no interviews will be granted prior to issuance of the panel’s decision.

 

Q31.  When can applicant expect to receive the panel’s decision on the Pre-Appeal Brief Conference Request?

Generally, the Office should mail a decision within 45 days of a properly-filed request.

 

Q32.  Will the Office provide a written analysis of the panel’s decision?

No.  In response to the Conference Request, the Office will mail a form titled, “Notice of Panel Decision from Pre-Appeal Brief Review” indicating one of the following:

Finding 1: The application remains under appeal because there is at least one actual issue for appeal.

Finding 2: Prosecution on the merits is reopened and an appropriate Office communication will follow in due course.  In appropriate circumstances, a proposed amendment may accompany the panel's decision proposing changes that, if accepted, may result in an indication of allowability for the contested claim(s).

Finding 3: The application is allowed on the existing claims and prosecution   remains closed.

Finding 4: The request fails to comply with the submission requirements and is dismissed.

 

Q33.  Is a Pre-Appeal Brief Conference panel decision a final agency action for purposes of court review?

No.  A panel decision is not a final agency action for purposes of court review.  An applicant who is dissatisfied with the panel’s decision must pursue the appeal before the Board of Patent Appeals and Interferences.

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F. Action after Panel Decision/Treatment

Q34.  If applicant receives a “Notice of Non-Compliant Pre-Appeal Brief Request for Review” (Form PTOL-462) in response to the Request, what is the time period for filing an appeal brief to perfect the appeal?

Applicant will be promptly notified if the request is dismissed as non-compliant. The time period for filing an appeal brief two months from the filing date of the notice of appeal continues to run.  See 37 CFR 41.37(a).  Appellants may petition for extensions of time under 37 CFR 1.136 pursuant to 37 CFR 41.37(e).

 

Q35.  If the “Notice of Panel Decision from Pre-Appeal Brief Review” requires applicants to proceed to the Board of Patent Appeals and Interferences (Finding 1), what is the time period for filing an appeal brief to perfect the appeal?

The time period for filing an appeal brief will be reset to one month from the mailing of the decision on the request, or the balance of the two-month time period running from the notice of appeal, whichever is greater.  The time period for filing an appeal brief is extendible under 37 CFR 1.136.  The Office will sua sponte waive 37 CFR 41.37(a)(1) to the extent that the rule is inconsistent with the Pre-Appeal Brief Conference Pilot Program. 

 

Q36.  If the “Notice of Panel Decision from Pre-Appeal Brief Review” indicates that the request is improper and a conference will not be held (Finding 4), what is the time period for filing an appeal brief to perfect the appeal?

The time period for filing an appeal brief will be reset to one month from the mailing of the decision or the balance of the two-month time period running from the notice of appeal, whichever is greater.  The time period for filing an appeal brief is extendible under 37 CFR 1.136.  The Office will waive 37 CFR 41.37(a)(1) to the extent that the rule is inconsistent with the Pre-Appeal Brief Conference Pilot Program.

 

Q37.  If applicant receives a panel decision that prosecution is being reopened, can applicant request a refund of the notice of appeal fee?

No.  The notice of appeal fee is not refundable even if the panel decision is favorable to the applicant.  However, any previously paid notice of appeal fee will be applied to a new appeal on the same application as long as a final Board decision has not been made on the prior appeal.  See MPEP 1204.01.

 

Q38.  If applicant wishes to reinstate an appeal after prosecution is reopened, can applicant file a new notice of appeal and also request a Pre-Appeal Brief Conference?

Yes.  If the Office reopens prosecution and applicant wishes to reinstate the appeal, applicant may file both a new notice of appeal and a new request for Pre-Appeal Brief Conference on the same date.  It makes no difference if applicant previously filed a request for Pre-Appeal Brief Conference and received a panel decision; a new request for Pre-Appeal Brief Conference may be filed with a new notice of appeal.

 

Q39.    The mailing of a panel decision on a Pre-Appeal Brief Conference Request resets the time period for filing an appeal brief to one month from mailing of the decision on the request, or the balance of the two-month period running from the receipt of the notice of appeal, whichever is greater.  The time period for filing an appeal brief is extendible under 37 CFR 1.136.  If applicant wishes to file an RCE, when would applicant be required to file the RCE? 

The RCE must be filed during the pendency of the application.  The RCE would be timely if submitted within the greater of two months from the date of the notice of appeal or one month from the mail date of the panel’s decision on the Pre-Appeal Brief Conference Request.  The time period for filing the RCE is extendable under 37 CFR 1.136. 

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Last Modified: 5/17/2011 10:26:05 AM