On September 15, 2015, the USPTO announced the “Streamlined, Expedited Patent Appeal Pilot for Small Entities.”1 This program allows small entities to expedite an ex parte appeal to the PTAB, similar to the program announced on June 19, 2015, for parties with multiple appeals pending at the PTAB.2
The first program was designed to alleviate the backlog of ex parte appeals, with the idea that much of the backlog is driven by multiple patent filers that appeal as a matter of course. This program allows appellants with multiple appeals pending before the Board to expedite review of one appeal in return for withdrawing another appeal.3 The process to participate in the “Expedited Patent Appeal Pilot” simply involves filing a petition to make special under 37 C.F.R. 41.3 to the Chief Administrative Patent Judge using Form PTO/SB/438.4 The second small entity pilot program involves a similar process again with the hope of further reducing the backlog.
Under the Streamlined, Expedited Patent Appeal Pilot for Small Entities, a petition must be filed under 37 C.F.R. 41.3 using Form PTO/SB/441 to identify the ex parte appeal sought to be made special, which must be the appellant’s only appeal pending before the Board as of September 18, 2015, and the appeal to be made special must have been docketed with the PTAB on or before September 18, 2015.5 Of course the appellant must certify that its status as a small entity or micro entity is still appropriate.6 The appellant must also agree to the disposition of all claims subject to each ground of rejection as a single group.7 Further, the appeal must not involve any claim subject to rejection under 35 U.S.C. § 112—lack of written description, enablement, or best mode, or for indefiniteness.8 Lastly, the appellant must waive any oral hearing.9
The stated goal of the small entity program is to provide a decision whether to make the appeal special within 2 months of the filing of the petition and more critically, deciding the appeal in less than 4 months from the date of the petition.10 If accomplished, this would be a striking reduction in time compared to the current pendency for appeal decisions this fiscal year, which ranges between an average of 2 to 3 years, depending on the Technology Center.11 Although, the first pilot has only been available for a short time, the USPTO published statistics on the success thus far:12 Please see the published statistics here.
The USPTO’s expedited appeal program for small entities is available for those appeals already docketed at the PTAB. Thus, the program does not appear to allow any future appellants to take advantage of an expedited appeal under this process. Presumably, the program will reduce the current backlog so future appellants also will benefit from the program, assuming that those already in the PTAB queue will take advantage of it.
2 See Expedited Patent Appeal Pilot, 80 Fed. Reg. 34,145 (June 15, 2015); USPTO, Expedited Patent Appeal Pilot, http://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/expedited-patent-appeal-pilot.
3 Expedited Patent Appeal Pilot, 80 Fed. Reg. 34,145 (June 15, 2015).
5 80 Fed. Reg. 55,339 (Sept. 15, 2015). It should also be noted that the petition fee has been waived.
6 See 37 CFR 1.27 and 1.28 concerning small entity status and see 37 CFR 1.29 concerning micro entity status.
7 Id.; see 37 CFR 41.37(c)(1)(iv) concerning the treatment of claims subject to the same ground of rejection argued together as a group.
8 80 Fed. Reg. 55,339 (Sept. 15, 2015).
11 Id. at pages 20-21
12 USPTO, Expedited Patent Appeal Pilot, http://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/expedited-patent-appeal-pilot.