New PTAB Pilot to Allow Flexibility in Appeal Priority

Starting Friday, June 19th, the PTAB will begin a new pilot program to allow appellants with multiple ex parte appeals pending before the Board to expedite review of one appeal in return for withdrawing another appeal. The stated purpose of the Expedited Patent Appeal Pilot is to allow appellants with multiple ex parte appeals (i.e., large patent filers) pending to have greater control over the priority with which their appeals are decided and reduce the backlog of appeals pending before the Board.  

The backlog of ex parte appeals has remained relatively constant (in the mid 20,000 range) for several years.  This backlog, coupled with much longer delays in appeal briefing cycles, effectively delays Board decision’s on ex parte appeals (outside of reexamination appeals that are accorded special dispatch) for three years, or longer. While I can’t imagine independent inventors will be thrilled with a program that allows large filers a slightly faster path to a Board decision, the hope here is that if enough participate, the backlog will shrink, benefiting all appellants. As the PTO clearly realizes, the backlog is driven by many large, U.S. patent filers that appeal as a matter of course. 

Appellants wishing to participate in the pilot program

need only make a certification and file a petition to the Chief Judge under 37 C.F.R. § 41.3. The Office has waived the petition fee and provided a form-fillable PDF (Form PTO/SB/438) for use in filing the certification and petition. As part of the petition process, an appellant must certify that docketing notices were issued for the appeal to be made special and the appeal to be withdrawn before June 19, 2015, and that both applications underlying the identified appeals are owned by the same party as of June 19, 2015, or name at least one inventor in common.  Additionally, the appellant must agree to waive any requested oral hearing in the appeal to be made special and acknowledge that any oral hearing fees paid in connection with the appeal to be made special and any appeal fees, including oral hearing fees, paid in connection with the appeal to be withdrawn will not be refunded.

Given the requirement that the appeals have to be docketed by the Board (i.e., have been through a long briefing process), I would not expect this program to make much of a dent in the backlog.  Now if you could unplug appeals that are not yet docketed (providing a longer term reduction in the backlog) you would get more than a few takers. However, that would not provide immediate relief to the the Board’s docket. Once an appeal is docketed at the Board, an applicant has already waited 12-18 months, or longer. The ability to withdraw the appeal (e.g., file an RCE) has always been a possibility (for non-reexam appeals). As such, I just don’t see much motivation to pull a long-standing appeal effort that is now on the Board’s docket just to juice another forward by a handful of months. 

In any event, the Board is trying to reduce the backlog in any way that it can, and that is a good thing.