USTPO unveils new fast-track pilot for patent appeals
A fast-track programme to hasten appeal applications before the Patent Trial and Appeal Board (PTAB) has been rolled out today, July 2, according to a notice released by the United States Patent and Trademark Office (USTPO).
The “Fast-Track Appeals Pilot Program” sets a target of reaching a decision on a fast-tracked appeal within six months from the date an appeal is entered. Currently, the average appeal waiting time is about 15 months.
“An appellant who has filed an ex parte appeal and received a notice that the appeal has been docketed may file a petition, accompanied by a petition fee, to expedite the review of his or her appeal,” said the notice.
The programme is offered on a temporary basis and will accept petitions to request the inclusion of an appeal until 500 appeals have been accorded fast-track status, or until July 2, 2021.
The petition fee is $400 and the threshold of 500 granted petitions corresponds to approximately 8% of the total number of new appeals received by the PTAB in the average year.
“Appeals to the PTAB are normally taken up for decision in the order in which they are docketed. However, a small number of appeals are advanced out of turn due to a special status,” said the notice.
The move follows the success and popularity of a prioritised examination introduced by the PTAB under the America Invents Act.
“Fast-track decisions on ex parte appeals under this pilot programme may 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,” said the notice.
The USPTO may extend the programme on either a temporary or permanent basis or may discontinue the programme if there is insufficient usage.
Erik Hawes, partner at Morgan Lewis, said: “In recent years, the appeal process at the USPTO has been so slow that it was often not considered to be a viable option for applicants facing a final rejection. This was particularly true in fields where technical innovation tends to move quickly, such as the oil and gas industry.
“As a result, applicants facing a final rejection would often have no realistic choice but to file a request for continued examination, which simply leads to reopening prosecution with the same examiner who has already repeatedly rejected the claims of the pending application. In situations where the examiner and applicant are not clearly communicating, for whatever reason, this has left applicants with no good option at the end of the day. There is now a legitimate choice in those situations so, for a small subset of applications, the expedited appeal process could truly be a game-changer.”
For further information, visit www.uspto.gov/PTABFastTrack.
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