USPTO Introduces an Expedited Patent Appeal Pilot

On June 15, 2015, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) introduced a new pilot program, beginning on June 19, 2015, that will allow appellants with multiple ex parte appeals pending before the PTAB to obtain an expedited review of one appeal in return for withdrawing another appeal. The stated goals of this program are to allow appellants with multiple ex parte appeals pending to have greater control over the priority with which their appeals are decided and reduce the backlog of appeals before the PTAB.

Appellants wishing to participate in the pilot program must file a Petition to the Chief Judge under 37 C.F.R. § 41.3. Normal petition fees are waived. The appellant must certify that, as of June 19, 2015, docketing notices were issued for both the appeal to be expedited (made “special”) and the appeal to be withdrawn, and that the patent applications in both appeals are owned by the same party or name at least one inventor in common. Additionally, appellants must also agree to waive oral hearing for the expedited appeal. The PTAB goal is to decide the expedited appeal within six months after receiving appellant’s petition.

Most appeals are presently decided about 30 months after appellant files a notice of appeal. If it is reasonable to assume that docketed appeals available to be expedited were appealed on average about 18 to 20 months ago, appellants may expect to save between four and six months time using this pilot program.

Gibbons P.C. will monitor further developments in the PTAB pilot program for expedited review of ex parte appeals. Given that appellants lose their right to an oral hearing and another pending appeal as part of the bargain, it will be interesting to see how many appellants ultimately choose this path.

Thomas J. Bean is a Director in the Gibbons Intellectual Property Department.
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