USPTO Initiates Fast-Track Appeals Pilot Program

McDonnell Boehnen Hulbert & Berghoff LLP

McDonnell Boehnen Hulbert & Berghoff LLP

In a notice published in the Federal Register last month (85 Fed. Reg. 39888), the U.S. Patent and Trademark Office announced that it was initiating a Fast-Track Appeals Pilot Program, to provide for the advancement of applications out of turn in ex parte appeals before the Patent Trial and Appeal Board.  The new pilot program, which took effect on July 2, 2020, is scheduled to run until July 2, 2021 or until 500 petitions for inclusion in the program have been accepted, whichever occurs earlier.

In announcing the new pilot program, the Office noted that appeals to the PTAB are normally taken up for decision in the order in which they are docketed, with the exception of a small number of appeals (about 1.1%) that are advanced out of turn due to special status.  In view of the success and popularity of prioritized examination, which the Office notes was granted for approximately 2.7% of the total number of applications filed in FY2019, the PTAB has decided to adopt a similar mechanism for according fast-track status to ex parte appeals.

Appeals advanced out of turn under the Fast-Track Appeals Pilot Program are expected to reach a decision within six months from the date an appeal is entered into the new program.  The Office notes that the average appeal pendency is currently about 15 months.  The Office also notes that the new pilot program is intended to "hasten patentability determinations on new inventions and the pace at which products or services embodying these inventions are brought to the marketplace, thus spurring follow-on innovation, economic growth, and job creation."

In order to request inclusion in the Fast-Track Appeals Pilot Program, appellants must satisfy the following requirements:

• The appeal must involve an original utility, design, or plant nonprovisional application that has not been already treated as special during appeal.

• Appellants must have received an appeal docketing notice from the PTAB.

• Appellants must file a petition under 37 C.F.R. § 41.3 and identify the application and appeal by application number and appeal number.  The petition must also be signed by an applicant or registered practitioner having a power of attorney or authority to act.  The Office notes that it has created a "Petition—Fast-Track Appeals Pilot Program" (Form PTO/SB/451) for use in satisfying this requirement.

• Appellants must pay a petition fee of $400.

Petitions for inclusion in the Fast-Track Appeals Pilot Program may be filed between the date when the PTAB issues a notice that the appeal has been docketed and the date on which the appellant withdraws the appeal, a final decision is rendered by the PTAB, or PTAB jurisdiction ends.  The Office's notice also indicates that any request by an appellant that causes a delay in the conduct of the appeal will result in the removal of the appeal's fast-track status without refund of the petition fee.

The Office indicates that it will communicate the number of granted petitions for the Fast-Track Appeals Pilot Program here, and recommends that appellants take this information into account when deciding whether to file a petition.  As of August 3, the Office had received 34 petitions and had granted 32 of those petitions.  The Office also notes that it has a goal of rendering decisions on petitions to accord fast-track status to appeals within one month from the filing date of the petition.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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