USPTO Offers Small Entities One Streamlined Patent Appeal

Foley & Lardner LLP

In a September 15, 2015 Federal Register Notice, the USPTO announced a pilot program that will permit certain Small or Micro Entities to expedite a pending ex parte appeal. According to the Notice, the USPTO aims to decide petitions to be enrolled in the expedited patent appeal program within 2 months, and to render decisions in enrolled appeals within 4 months. As with the pilot “bump one, dump one” program, this program has restrictions and comes at a price that appellants should consider carefully before enrolling.

The Streamlined, Expedited Patent Appeal Pilot For Small Entities

The USPTO calls this program the “Streamlined, Expedited Patent Appeal Pilot For Small Entities.” It is open to Small Entities or Micro Entities who have a single ex parte appeal pending at the Board as of September 18, 2015. As outlined in the Federal Register Notice, the program requirements include:

  • the Appellant is a Small Entity or Micro Entity, and Small Entity or Micro Entity status already has been established in the application and is still correct.
  • the ex parte appeal at issue is the only appeal of the Appellant that is pending at the Board as of September 18, 2015, and already was docketed with the Board as of September 18, 2015.
  • the appeal does not involve any rejections under 35 USC § 112.

There is no fee for this program, but the Appellant must agree to the following conditions:

  • for rejections applied to more than one claim, the Board may select a single claim as representative, and base its decision on its analysis of that claim.
  • any request for oral hearing must be waived.
  • the USPTO will not refund any fee paid to support a request for oral hearing.

As noted above, the USPTO hopes to decide petitions to be enrolled in the program within 2 months, and to render decisions in enrolled appeals within 4 months. In contrast, the USPTO provides the following chart of the average time from appeal docketing notice to decision in cases decided in this fiscal year.

The program will run until 2,000 appeals have been enrolled or until September 16, 2016, whichever occurs first.

Will This Program Stimulate Job Growth?

According to the USPTO, this program has the potential of “hastening the pace at which the invention is …brought to the marketplace, and thus spurring follow-on innovation, economic growth, and job creation.” Those are lofty goals for a program with so many requirements.

As revealed in the USPTO’s Data Visualization Center, over 22,000 ex parte appeals are pending decision; thus this program could reduce the appeal backlog by 10%, if 2,000 appeals are enrolled. It would be interesting to know the size of the pool of eligible appeals, i.e., how many of the pending appeals are the only pending appeal of a Small Entity or Micro Entity Appellant and have no § 112 rejections? It also would be interesting to know how many requests for oral hearing were filed in the eligible appeals, since I consider the requirement to waive oral hearing a significant cost that would require careful consideration before enrolling in this program.

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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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