Founding Partner
When the USPTO issues a final rejection on your patent application, you may feel like your only option is to file a full appeal. But there’s another path that’s faster and less expensive: a Pre-Appeal Brief Request for Review. This tool allows you to challenge a final rejection without going through the entire appeal process. If used wisely, it can save you time, money, and frustration.
When to Consider a Pre-Appeal Brief Request
A pre-appeal brief request is a good option when the rejection in your case contains a clear legal or procedural error—something that can be addressed without arguing the technical merits of your invention. It’s not meant for long, drawn-out disagreements about claim interpretation or invention complexity.
Here are a few examples of when this approach may be appropriate:
- The examiner overlooked key claim elements
- The rejection misapplies a legal rule or precedent
- The cited references don’t actually support the rejection
- The rejection contradicts the examiner’s own statements earlier in the prosecution
These are high-level issues, not ones that require weighing evidence or diving into technical arguments. When you’re confident that the rejection is flawed on its face, this can be a smart first step before committing to a full appeal.
How the Process Works
The process starts with filing a Notice of Appeal. That tells the USPTO you’re appealing the final rejection. But before submitting a full appeal brief, you can file a Pre-Appeal Brief Request for Review—a short document (five pages max) that lays out why the examiner’s rejection is flawed.
Here’s how it unfolds:
- Submit the request: Along with the Notice of Appeal, file your pre-appeal brief.
- Make your case: The brief should clearly and concisely explain why the rejection can’t stand as written. It’s not the place for extensive arguments—just the strongest points.
- Panel review: A panel made up of the examiner and two other PTO staff members will review your request.
- Wait for a decision: You’ll usually hear back in a few months, often quicker than a full appeal would take.
A few important points to remember:
- You’re limited to five pages, so every sentence matters.
- No new evidence or amendments are allowed.
- There’s no extra fee for the pre-appeal beyond the standard appeal filing fee.
This is a low-risk way to see if the panel agrees there’s an issue worth addressing right away.
Possible Outcomes and What They Mean
Once the panel reviews your request, there are three possible outcomes:
- Proceed to Full Appeal: The panel decides the rejection stands, and your case moves to the full appeal process.
- Reopen Prosecution: The panel agrees the rejection was flawed. The examiner will reexamine the application, possibly issuing a new Office Action.
- Allowance or Favorable Action: In some cases, the panel may instruct the examiner to allow the claims or make other positive changes.
Even if the panel doesn’t side with you, nothing is lost—you still get to pursue the full appeal. On the other hand, if the panel agrees, you can save months of time and thousands in legal fees.
Tips for a Strong Request
Success with a pre-appeal brief depends on how well you frame your argument. Keep it sharp and focused. This isn’t the place for a full technical breakdown—it’s a chance to show the rejection has a clear problem on its face.
Here are some tips:
- Stick to the strongest issue—don’t try to cram in too many arguments
- Avoid legal jargon—write clearly and directly
- Use one or two well-placed citations—only if they help your core point
- Keep formatting clean and easy to read—short paragraphs, clear structure
We often tell clients to think of the pre-appeal as a quick pitch: you’re trying to convince the panel this case doesn’t belong in the full appeal process.
A Smart First Step Before a Full Appeal
A pre-appeal brief request gives you a valuable opportunity to cut through a bad rejection without going through a drawn-out appeal. If your case fits the criteria, it can get things moving in the right direction faster and with less cost. If you’re unsure whether this approach is right for your patent, contact Gearhart Law today. We can help you weigh your options and prepare a targeted request that gives your application the best shot at success.