Rule Review
An Appealing Trade: The Expedited Patent Appeal Pilot Program
Obtaining a patent can be a slow process. The process becomes even longer when an applicant decides to appeal the final rejection of its claims. According to data released by the U.S. Patent and Trademark Office (USPTO), the average appeal takes about thirty months to be decided. In an effort to address its backlog, the USPTO has announced the Expedited Patent Appeal Pilot program (EPAP), which has as a goal to reduce the backlog of appealed applications and shorten the pendency of an appeal to the Patent Trial and Appeal Board (Board).
Patent appeals are generally taken up by the Board in the order in which they are docketed. The EPAP will allow appellants who have multiple appeals pending before to Board to file a request to make special one of the pending appeals, therefore expediting its consideration by the Board, on the condition that the appellant withdraws a copending appeal in either another application, or an ex parte reexamination with an ex parte appeal. According to the USPTO, not only will the EPAP help reduce the USPTOe’s backlog, but it will also allow appellants having multiple ex parte appeals currently pending before the Board to have greater control over the priority with which their appeals are decided. Thus, at least in theory, an appellant can accelerate the Board’s decision on an appeal involving an invention of greater importance to the appellant. For example, a successful appeal could hasten the pace at which the appellant’s invention is patented, and the pace at which products or services embodying the patent are brought to the marketplace. This in turn could spur follow-on innovation, economic growth, and job creation. All these benefits, however, come at the cost of the appellant foregoing another pending appeal, perhaps one in which the underlying invention is no longer a business pursuit or priority of the appellant.
For the USPTO to accord special status to an appeal pending before the Board, an appellant must certify that docketing notices were issued for the appeal to be made special and the appeal to be withdrawn before June 19, 2015, and that both applications underlying the identified appeals are owned by the same party as of June 19, 2015, or name at least one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. The appellant must agree to waive any requested oral hearing in the appeal to be made special. And while no petition fee is required, the appellant must 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. The petition must be signed by a registered practitioner who has a power of attorney for the application involved in the appeal to be made special and for the application or patent under reexamination involved in the appeal to be withdrawn.
The USPTO’s goals for handling an EPAP application is to render a decision on the petition to make the appeal special no later than two (2) months from the filing date of the petition, and deciding the appeal made special no later than four (4) months from the date a petition to make an appeal special is filed. The pilot program became effective on June 19, 2015, and has been adopted on a temporary basis until two thousand (2,000) appeals have been accorded special status under the EPAP, or until June 20, 2016, whichever occurs earlier. As with other pilot programs, the USPTO may extend the pilot program, depending upon its results. Complete details of the requirements to participate in the program are available at https://www.federalregister.gov/articles/2015/06/15/2015-14754/expedited-patent-appeal-pilot.