Second Pilot Announced to Expedite Ex Parte PTAB Appeals

By Scott McKeown on September 16, 2015

Second Pilot Directed to Small & Micro Entities

Back in June, the PTAB began a 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. The stated purpose of the Expedited Patent Appeal Pilot is to allow appellants with multiple, pending ex parte appeals (i.e., large patent filers) to have greater control over the priority with which their appeals are decided. This pilot is also hoping to reduce the backlog of appeals pending before the Board.

When introduced, I noted that I could not imagine independent inventors being thrilled with a program that allows large filers a slightly faster path to a Board decision.

Fortunately, the agency has now introduced a second pilot directed to small and micro entities.

The second pilot allows small or micro entity appellants with only a single ex parte appeal pending before the PTAB to expedite review of that appeal in return for agreeing to streamline the appeal.

Specifically, the appeal must not involve any claim subject to a rejection under 35 U.S.C. § 112, and the appellant must agree to the disposition of all claims subject to each ground of rejection as a single group and waive any request for an oral hearing. The Streamlined, Expedited Patent Appeal Pilot for Small Entities will allow small or micro entity appellants who streamline their appeals to have greater control over the priority in which their appeals are decided. The streamlining of appeals under this pilot will also assist the Board to more efficiently reduce the overall inventory of appeals pending before the Board.

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/441) for use in filing the certification and petition. More information can be found here.

Recently, the USPTO has published statistics on the success of the first pilot. While a modest response to date, perhaps the ability to receive an appeal decision within one month (of petition grant) will entice a greater response going forward. (chart below).