Pre-Appeal Brief Requests for Review – High Success Rate for PTAB Appellants

An examiner final rejection decision may be contested in multiple ways. A straightforward, fast and inexpensive way is to utilize MPEP § 1204.02 and its Pre-Appeal Brief Request for Review Procedure

MPEP § 1204.02 permits a patent applicant to contest an examiner’s final rejection decision by filing, with a notice of PTAB appeal, an appellate argument paper, five pages or less. The process commences with the filing of a form, PTO/AIA/33, the pre-appeal brief request for review form, attaching the notice of appeal and appellate argument paper. MPEP § 1204.02 then requires that a 2-employee Technology Center Conference (current examiner and a supervisor) take place soon on whether to maintain the pending appeal or concede some or all of the appeal-issues.

Many such appellate argument papers quickly lead to favorable results for the patent applicant/appellant. From April 2021 through April 2022, MPEP § 1204.02 Technology Center Conferences shut down 35% of PTAB Appeals. Only 65% of appeals invoking MPEP § 1204.02 were forwarded to the PTAB for the patent applicant/appellant to file a main brief and continue with the appeal. Technology Centers removed all appeal-issues in 35% of cases utilizing MPEP § 1204.02. No action by, or brief to, the PTAB was necessary. Please contact Joe Piccolo at DBJG with any questions concerning PTAB appeals.