New Pilot Program for Ex Parte Appeals for Appellants with Multiple Concurrently Pending Ex Parte Appeals Announced by USPTO on July 14, 2015

By Michael Stein

As people in the patent field know, patent appeals from an examiner’s final decision can take a significant amount of time, even years, with there being a large backlog of patent applications on appeal before the PTAB. In a just issued notice, the USPTO has recently launched a new pilot program that will permit appellants with multiple ex parte appeals pending before the Patent Trial and Appeal Board (PTAB) to expedite review of one appeal in return for withdrawing another appeal. This pilot program offers a number of advantages, at least from the USPTO’s vantage point, while being simple to use.

The advantages set forth by the USPTO are:
1. the Expedited Patent Appeal Pilot allows appellants having multiple ex parte appeals currently pending to have greater control over the priority with which their appeals are decided;
2. reducing the backlog of appeals pending before the PTAB; and
3. permit an appellant having multiple appeals pending to accelerate the PTAB’s decision on an appeal involving an invention of greater importance to the appellant.

According to the current normal procedures appeals to the PTAB are taken up for decision in the order in which they are docketed. The current average pendency of an ex parte appeal at the PTAB is approximately 30 months. An appeal that is accorded special status under the Expedited Patent Appeal Pilot Program will be advanced out of turn for a decision on the appeal. The goal of the pilot is to render a decision on the appeal accorded special status no later than six months from the date of filing of the petition. Thus, participation in the pilot could save up to 2 years in wait time for a decision on an appeal.

Appellants wishing to participate in the pilot program need only make a certification and file a petition to the Chief Judge. The petition fee will be waived and there is the USPTO is providing a form-fillable PDF (Form PTO/SB/438) for use in filing the certification and petition. Although an application having no allowed claims becomes abandoned upon withdrawal of an appeal, applicants are permitted under the pilot program to file a Request for Continued Examination (RCE) in the application of the appeal sought to be withdrawn to continue prosecution and avoid abandonment of that application.
However, there are limitations and drawbacks to participation in the this pilot program, such as:
1. as part of the petition process, an appellant must certify that docketing notices were issued for the appeal to be made special and the appeal to be withdrawn before June 19, 2015, and that both applications underlying the identified appeals are owned by the same party as of June 19, 2015, or name at least one inventor in common. Thus, it is not possible to file an Appeal now solely for the purpose of getting an earlier filed appeal to be eligible for expedited consideration since we are already past the June 19, 2015 date;
2. the appellant must agree to waive any requested oral hearing in the appeal to be made special and acknowledge that any oral hearing fees paid in connection with the appeal to be made special and any appeal fees, including oral hearing fees, paid in connection with the appeal to be withdrawn will not be refunded.
The following is a link to the Expedited Patent Appeal Process on the USPTO website
http://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/expedited-patent-appeal-pilot
and the fillable form PTO/SB/438
http://www.uspto.gov/sites/default/files/documents/sb0438%20Rev%202015-05-01.pdf.

In addition to the Expedited Patent Appeal Pilot, the USPTO is working on other initiatives to reduce the ex parte appeal backlog, which the agency will release soon. The PTAB continues to hire administrative patent judges, patent attorneys, and paralegals. In addition, the PTAB is starting a law clerk fellowship pilot program and is identifying further ways to provide more support to administrative patent judges to increase efficiency.

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