What are your options for responding to a Final Office Action?
When faced with a final rejection, a patent applicant has a couple of options in trying to overcome the rejection. One option is to continue prosecution by filing a further response, such as an after-final response which may be accompanied by a Request for Continued Examination (RCE) if new arguments or claim amendments are introduced. Another option is to appeal to the Patent and Trial Appeal Board (PTAB). Before moving forward with the full appeal process, it might make sense to consider a pre-appeal brief review.
Streamlining the Appeal Process
Since appealing a patent application rejection can be quite expensive and lengthy, the USPTO has provided appellants with a streamlined appeal option known as the Pre-Appeal Brief Review Request and Conference Pilot Program. This program enables the applicant to present concise arguments as to why the final claim rejections were improper before having to file the (potentially burdensome and costly) appeal brief.
Pre-Appeal Brief Review Requirements
To be considered for the program, an applicant must file the following with a Notice of Appeal:
- Pre-Appeal Brief Request for Review; and
- written argument(s) not exceeding five pages.
Possible Outcomes of Pre-Appeal Brief Review Request
After a proper request is filed, a supervisor will designate a panel of appropriate reviewers to review the pre-appeal written arguments. The panel will include at least a supervisor and the examiner of record. After the review is complete, the USPTO will mail a decision on the status of the application.
Here are the possible outcomes of a pre-appeal brief review request:
- the request is defective;
- the application is allowed;
- an actual issue for appeal exists such that the applicant must proceed with filing the appeal brief; or
- prosecution is reopened.
If the outcome is favorable, the advantages of the “pre-appeal” timing of this program include potential savings in time and money as the applicant avoids the expensive appeal brief.
When does a pre-appeal brief review request make sense?
Not every final rejection, however, is appropriate for this option. Such a request may be most effective where the perceived impropriety of a final rejection can be clearly argued in writing by the applicant in 5 pages or less. Whether this program speeds up the application process depends upon the outcome since an unfavorable result or the reopening of prosecution can actually lengthen the prosecution.