If your patent application has been rejected at least twice, it may be time to file an appeal with the USPTO’s Patent Trial and Appeal Board. But a full appeal can be an expensive and lengthy proposition. Is it really the best way forward for your business?
It turns out there’s a shortcut – a way to obtain some of the benefits of an appeal without going through with the whole process. That shortcut is called a Pre-Appeal Brief Request for Review (PABR).
When can I file a Pre-Appeal Brief Request for Review?
Just like a standard patent appeal, a PABR is only an option after your application has received at least two rejections. However, you must request a PABR at the beginning of the appeal process. Specifically, you must file the PABR request along with the Notice of Appeal. Once the appeal is underway, it’s too late to change your mind and try a PABR instead.
What happens if I file a Pre-Appeal Brief Request for Review?
To initiate a PABR, your law firm will file a brief set of arguments with the USPTO laying out why your patent examiner is wrong. Unlike a standard Appeal Brief, these arguments are no more than five pages long. That’s one reason the PABR process is quicker than a full appeal.
These arguments are reviewed by a USPTO panel including at least your original examiner and a supervisor. After their review, the panel has three options:
- Allow the application;
- Issue a new Office action (i.e., a rejection or partial rejection); or
- Decline to take any action on the grounds that the issues involved are too complex for the PABR process.
In the third case, where the panel declines to take action, the application simply remains under appeal. Assuming you’re not ready to abandon everything at that point, you can either:
- (a) proceed with the standard appeal process by filing a formal Appeal Brief,
- (b) withdraw the appeal and return to normal examination, or
- (c) file another patent application and (sort of) start over.
The panel is supposed to issue its decision within 45 days of receiving the PABR, but this is not guaranteed.
Pros and cons of a Pre-Appeal Brief Request for Review
In general, the main advantage of the PABR is that it requires the examiner to review your arguments with his or her supervisor. This provides another perspective on the rejections in question – basically like asking for a second opinion. Without a PABR, this wouldn’t happen until you file the full Appeal Brief, which is generally a longer and more complex legal document than the PABR arguments. Accordingly, you can reach the second-opinion phase more quickly and at a lower expense than you would without a PABR.
The caveat is that because the PABR process is greatly simplified relative to a full, standard appeal, some rejections are too complex for the PABR panel to decide. The USPTO advises that “clear” legal or factual errors in a rejection are usually suitable for PABR, whereas rejections involving more nuanced legal issues are likely to be declined by the panel. So, there is a risk that the PABR panel will decline your case as too complicated, which means you might have gotten a resolution more quickly if you’d skipped ahead to the standard appeal.
The bottom line is that a PABR can help to avoid the effort and expense of a standard appeal when the examiner’s rejection is based on a clear error that would easily be resolved with the opinion of another examiner. But if it is declined, then you will have added some time and expense to the overall process. As usual, this is a cost/benefit analysis depending on your specific situation. Talk it over with your patent firm.
If you’re not making progress with your examiner, a full-blown appeal isn’t your only option. A Pre-Appeal Brief Request for Review might get you back on track to an allowance. As always, feel free to contact us if you have any questions.
Blog Post © 2021 Kolitch Romano LLP
Photo © 2020 Dave Bourgeau
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DISCLAIMER: This article is intended to give the reader an overview of the topic, and does not constitute legal advice as to any particular fact situation. Facts matter, and every situation is different. In addition, laws and their interpretations change over time and the contents of this article may not reflect these changes. You are strongly advised to consult competent legal counsel regarding your particular situation.