MPEP § 1204.02 — Pre-Appeal Brief Review Request and Conference Pilot Program (Annotated Rules)
§1204.02 Pre-Appeal Brief Review Request and Conference Pilot Program
This page consolidates and annotates all enforceable requirements under MPEP § 1204.02, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Pre-Appeal Brief Review Request and Conference Pilot Program
This section addresses Pre-Appeal Brief Review Request and Conference Pilot Program. Primary authority: 37 CFR 41.31, 37 CFR 1.116, and 37 CFR 1.136. Contains: 3 requirements, 5 prohibitions, 7 permissions, and 6 other statements.
Key Rules
Notice of Appeal Filing
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, not including Form PTO/AIA/33, 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. An after final amendment may not accompany the request. 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. A request that fails to comply with these requirements should be dismissed.
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, not including Form PTO/AIA/33, 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. An after final amendment may not accompany the request. 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. A request that fails to comply with these requirements should be dismissed.
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, not including Form PTO/AIA/33, 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. An after final amendment may not accompany the request. 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. A request that fails to comply with these requirements should be dismissed.
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, not including Form PTO/AIA/33, 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. An after final amendment may not accompany the request. 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. A request that fails to comply with these requirements should be dismissed.
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, not including Form PTO/AIA/33, 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. An after final amendment may not accompany the request. 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. A request that fails to comply with these requirements should be dismissed.
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, not including Form PTO/AIA/33, 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. An after final amendment may not accompany the request. 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. A request that fails to comply with these requirements should be dismissed.
If applicant files a notice of appeal, a Pre-Appeal Brief Conference Request, and an RCE all on the same date, the RCE will control. A notice of appeal cannot be entered into an application with an RCE until the application is under rejection, even if such application has been twice rejected prior to the RCE submission. Accordingly, the notice of appeal or the Pre-Appeal Brief Conference Request will not be considered. Applicant further cannot file a notice of appeal in the application until the application is under rejection. See MPEP § 1204, subsection II.
If applicant files a notice of appeal, a Pre-Appeal Brief Conference Request, and an RCE all on the same date, the RCE will control. A notice of appeal cannot be entered into an application with an RCE until the application is under rejection, even if such application has been twice rejected prior to the RCE submission. Accordingly, the notice of appeal or the Pre-Appeal Brief Conference Request will not be considered. Applicant further cannot file a notice of appeal in the application until the application is under rejection. See MPEP § 1204, subsection II.
If applicant files a notice of appeal, a Pre-Appeal Brief Conference Request, and an RCE all on the same date, the RCE will control. A notice of appeal cannot be entered into an application with an RCE until the application is under rejection, even if such application has been twice rejected prior to the RCE submission. Accordingly, the notice of appeal or the Pre-Appeal Brief Conference Request will not be considered. Applicant further cannot file a notice of appeal in the application until the application is under rejection. See MPEP § 1204, subsection II.
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.
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.
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.
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.
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.
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.
Ex Parte Appeals to PTAB
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, not including Form PTO/AIA/33, 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. An after final amendment may not accompany the request. 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. A request that fails to comply with these requirements should be dismissed.
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.
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.
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.
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.
Appeal Brief Requirements
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.
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:
…
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).
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:
…
(C) The application is allowed on the existing claims and prosecution remains closed.
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:
…
(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.
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.
AIA vs Pre-AIA Practice
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, not including Form PTO/AIA/33, 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. An after final amendment may not accompany the request. 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. A request that fails to comply with these requirements should be dismissed.
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, not including Form PTO/AIA/33, 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. An after final amendment may not accompany the request. 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. A request that fails to comply with these requirements should be dismissed.
Appeal Brief Timing
Appellant cannot request withdrawal of a properly-filed notice of appeal for the purpose of requesting a Pre-Appeal Brief Conference and must perfect the appeal by filing the appeal brief within two months of the date of the filing of the notice of appeal under 37 CFR 41.31. However, 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.
Examiner Sustained – Amendment Options
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.
Maintenance Fee Payment
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:
…
(B) Prosecution on the merits is reopened and an appropriate Office communication will follow in due course.
Citations
| Primary topic | Citation |
|---|---|
| AIA vs Pre-AIA Practice Ex Parte Appeals to PTAB Notice of Appeal Filing | 37 CFR § 1.116 |
| Ex Parte Appeals to PTAB Notice of Appeal Filing | 37 CFR § 1.136 |
| AIA vs Pre-AIA Practice Appeal Brief Timing Ex Parte Appeals to PTAB Notice of Appeal Filing | 37 CFR § 41.31 |
| AIA vs Pre-AIA Practice Ex Parte Appeals to PTAB Notice of Appeal Filing | MPEP § 1201 |
| Notice of Appeal Filing | MPEP § 1204 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 1204.02 — Pre-Appeal Brief Review Request and Conference Pilot Program
Source: USPTO1204.02 Pre-Appeal Brief Review Request and Conference Pilot Program [R-01.2024]
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, not including Form PTO/AIA/33, 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. An after final amendment may not accompany the request. 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. A request that fails to comply with these requirements should be dismissed.
If applicant files a notice of appeal, a Pre-Appeal Brief Conference Request, and an RCE all on the same date, the RCE will control. A notice of appeal cannot be entered into an application with an RCE until the application is under rejection, even if such application has been twice rejected prior to the RCE submission. Accordingly, the notice of appeal or the Pre-Appeal Brief Conference Request will not be considered. Applicant further cannot file a notice of appeal in the application until the application is under rejection. See MPEP § 1204, subsection II.
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.
Appellant cannot request withdrawal of a properly-filed notice of appeal for the purpose of requesting a Pre-Appeal Brief Conference and must perfect the appeal by filing the appeal brief within two months of the date of the filing of the notice of appeal under 37 CFR 41.31. However, 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.
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.