Since July of 2005 the Office has provided an ongoing pilot program in which an appellant, upon the filing of a notice of appeal may also request a pre-appeal brief review. See “Pre-Appeal Brief Conference Pilot Program,” 1296 OG 67 (July 12, 2005) and “Extension of the Pilot Pre-Appeal Brief Conference Program,” 1303 OG 21 (February 7, 2006). This program does not apply to reexamination proceedings. Presenting a request for pre-appeal brief review does not change the fee required to file a notice of appeal and does not require a separate fee. No extensions of time to file the request for review later than the notice of appeal are available.
In order to be proper the applicant must file a notice of appeal in compliance with 37 CFR 41.31. The request for pre-appeal brief review must be filed with the filing of the notice of appeal and before the filing of an appeal brief. Form PTO/AIA/33, “Pre-Appeal Brief Request for Review” may be used for filing the request. The request must be accompanied by arguments in a separate paper entitled, “Pre-Appeal Brief Request for Review”. The request may not exceed five (5) total pages and should provide a succinct, concise and focused set of arguments for which the review is being requested. Requests are limited to appealable, not petitionable matters. See MPEP § 1201. A request that fails to comply with these requirements should be dismissed.
A pre-appeal brief request that is found not compliant cannot be corrected and resubmitted to cure the reason(s) for non-compliance because the corrected request would not meet the requirement that the notice of appeal and pre-appeal brief request be filed on the same date.
Upon receipt of a properly filed request, a supervisor will designate a panel of appropriate reviewers to review the appellant’s remarks and the examiner’s rejections. The panel will include at least a supervisor and the examiner of record and will have the authority to reopen prosecution if appropriate. The appellant will not be permitted to attend the review and no interviews will be granted prior to issuance of the pre-appeal brief review decision.
After the review is complete, the Office will mail a decision on the status of the application. The decision will state one of the following:
- (A) The application remains under appeal because there is at least one actual issue for appeal.
- (B) 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).
- (C) The application is allowed on the existing claims and prosecution remains closed.
- (D) The request fails to comply with the submission requirements and is dismissed.
The panel’s review will be terminated if the applicant files any of the following responses after filing a request, but prior to a decision by the appointed panel of examiners assigned to conduct the review.
- (A) An appeal brief.
- (B) A request for continued examination.
- (C) An after final amendment.
- (D) An affidavit or other evidence.
- (E) An express abandonment.
After a panel decision, the time period for filing an appeal brief will be reset to be one month from the mailing of the decision on the request, or the balance of the two-month time period running from the receipt of the notice of appeal, whichever greater. Further, the time period for filing of the appeal brief is extendible under 37 CFR 1.136.
For as long as this pilot program remains in effect, submission of a pre-appeal review request may extend the period for filing an appeal brief until a decision is made on the request or the request is otherwise dismissed.