USPTO Announces Expedited Patent Appeal ProgramJune 18, 2015

On June 15, 2015, the USPTO announced in a Federal Register Notice that they will be commencing the Expedited Patent Appeal Pilot Program. This initial program will be available until either 2,000 ex parte patent appeals are expedited under the program, or until June 20, 2016, whichever occurs first.

Typically, appeals are taken up by the board in the order they are docketed to the Board. Average pendency of appeals can vary depending on the particular technology involved—ranging from 32.5 months (pharmaceuticals and biotechnology) to 24.5 months (chemical and materials engineering). Across all technology centers listed in the Federal Register, the average pendency is 29.7 months (i.e.about two and a half years). The program is designed to encourage those with multiple ex parte appeals currently pending before the Board to withdraw an appeal so that another be expedited; that is, a patent owner with two or more currently pending appeals may sacrifice one appeal in order to advance another of their appeals out of turn. It is also a goal of the program to render decisions quickly: within 2 months from time of filing on a decision to make an appeal special and within 4 months from the petition grant date for a decision in appeal.

The basic requirements for inclusion in the pilot program include:

·         common ownership (or at least one common inventor) in both applications as of June 19, 2015

·         Both having docketing notices no later than June 19, 2015.

·         Withdraw any request for oral argument.

·         Appellant must agree to not request a refund of any appeal fees, including oral hearing fees, which were paid.

·         No other fee is required.

It is also suggested that a Request for Continued Examination of the withdrawn appeal application be filed simultaneously with a request for expedited appeal. It is also mandatory that such an RCE include a “submission”that includes the arguments presented in the appeal brief.  Although the usual $400 fee to make a petition special is waived, the USPTO is not refunding any fees paid for the withdrawn appeal.

As with all USPTO pilot programs, the success of this program will continued to be monitored, and the program may be extended after the initial pilot program is set to expire.