• Jennifer Enmon PhD & Naomi Pearce

USPTO Creates Program to Resolve Ex Parte Appeals in 6 Months

The United States Patent and Trademark Office (USPTO) announced a pilot program to fast track appeals to the Patent Trial and Appeal Board (PTAB) from adverse decisions of examiners during patent prosecution (ex parte appeals).

The Pilot Program sets the PTAB a 6 month target from entry into the program to reach a decision on the appeal, which would substantial decrease the appeal pendency period that averages about 14 months and can be as high as 30 months.

Entry into the program requires a petition (USPTO Form PTO/SB/451) and the US$400 fee.

The pilot program is limited to original utility, design or plant nonprovisional applications and excludes applications already treated under an accelerated program (reissue applications, reexamination proceedings, or appeals made special due to the age or health of an applicant).The pilot program will also limit the number of petitions granted to 125 per quarter (500 per fiscal year). However, the PTAB has been given discretion to grant further petitions should the number of petitions exceed the limit in a given quarter. The number of petitions granted will be updated on the PTAB dedicated Fast Track website.

Appellants are cautioned that once accepted into the fast track program, oral hearings may not be rescheduled as doing so will be taken as opting out of the accelerated track. Appellants should take this into consideration before lodging a fast track petition.

While other appeal boards like the Boards of Patent Appeal of the European Patent Office have discretion to accelerate appeal proceedings on the basis of the urgent need of the appellant, the US program is unique in requiring no reasons for requesting acceleration. Thus, this Pilot Program will be a very welcome option over the current PTAB appeal process for applicants looking for a faster resolution of US prosecution.

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