TAKEAWAY: An ex parte appeal to the Patent Trial and Appeal Board may take years to be adjudicated. This delay may have serious commercial consequences for the appellant. However, under two new pilot programs, an appellant may be able to speed up the process significantly.
An ex parte appeal to the Patent Trial and Appeal Board (PTAB) is a useful and important tool for securing and protecting intellectual property rights. However, an ex parte appeal comes at a significant cost in time and money. For example, between October 2014 and June 2015 the average pendency of an ex parte appeal to the PTAB was two to two-and-a-half years. This pendency period delays the grant of a patent and may affect the timing of the commercial exploitation of the invention. Fortunately, the USPTO is taking steps to reduce the pendency of some currently pending ex parte appeals.
On June 15, 2015 the USPTO announced a new pilot program aimed to reduce the backlog of pending appeals and to expedite adjudication of some currently pending appeals. Under the “Expedited Patent Appeal Pilot,” an appellant may have a currently pending ex parte appeal accorded special status to be heard by the board out of turn. In return, the appellant must agree to withdraw another pending ex parte appeal. This will allow an appellant with multiple pending ex parte appeals to have more control over the timing of adjudication of their appeals. The pilot will continue until 2,000 appeals have been accorded special status or until June 20, 2016, whichever is earlier.
Participation in the pilot program requires:
- A certification and petition to grant special status to an ex parte appeal for which a docketing notice was mailed no later than June 19, 2015.
- A request to withdraw an appeal in another application or ex parte reexamination for which a docketing notice was mailed no later than June 19, 2015.
- Note that the fee for a petition to make an appeal special is waived for a petition filed under the pilot program.
On September 1, 2015 the USPTO announced a similar pilot program aimed at small entities. Under the “Streamlined, Expedited Patent Appeal Pilot for Small Entities,” a small or micro entity with a single currently pending ex parte appeal may obtain an expedited review of the ex parte appeal in exchange for agreeing to streamline the ex parte appeal. In particular, the appellant must file a petition to make special agreeing to the disposition of claims subject to the same grounds of rejection as a single group and agreeing to waive an oral hearing. The pilot will continue until 2,000 appeals have been accorded special status or until September 16, 2016, whichever is earlier.
The USPTO has stated a goal of rendering a decision on the petition to make special within two months of the filing of the petition, and rendering a decision on the streamlined ex parte appeal within four months of the decision to grant the petition to make special. At a total of six months from the filing of a petition to make special to a decision on the ex parte appeal, the pilot program has the potential to significantly reduce the pendency period of a pending ex parteappeal, and possibly provide commercial advantages to the appellant.