USPTO Announces Fast-Track Appeals Pilot Program

As of July 2, 2020, the United States Patent and Trademark Office (USPTO) initiated the Fast-Track Appeals Pilot Program to advance applications out of turn in ex parte appeals before the Patent Trial and Appeal Board (PTAB).  Below is a link to the official documentation:

Federal Register-Fast Track Appeals Pilot Program

The USPTO sets a target of issuing a decision on ex parte appeals within six months from the date that an appeal is entered into the Fast-Track Appeals Pilot Program.  

How Long The Fast-Track Appeals Pilot Program Will Last

The Fast-Track Appeals Pilot Program began on July 2, 2020 and will be offered until July 2, 2021.  The Fast-Track Appeals Pilot Program may end earlier in case a total of 500 petitions to request the Fast-Track Appeals Pilot Program are filed before July 2, 2021.  The USPTO will evaluate usage of the Fast-Track Appeals Pilot Program and decide to extend or discontinue.

How Soon The Fast-Track Appeals Pilot Program Can Expedite Decisions

Currently, the average ex parte appeal pendency is about 15 months. (Source: USPTO).

The Fast-Track Appeals Pilot Program expedite ex parte appeals by providing fast-track status, with a goal of issuing ex parte appeal decisions within six months from the date that an appeal for a particular application is entered into the Fast-Track Appeals Pilot Program.  

How Much The Fast-Track Appeals Pilot Program Cost

The Fast-Track Appeals Pilot Program requires a petition for advancing an appeal out of turn at a petition fee of $400.  This fee is not refundable.  The petition must identify application and appeal numbers.  

What Are The Requirements Of The Fast-Track Appeals Pilot Program

The Fast-Track Appeals Pilot Program is available for an original utility, design, or plant nonprovisional application.  In other words, reissue, reexamination, appeals made special due to the age or health of an applicant, or any other appeal made special, are excluded from the Fast-Track Appeals Pilot Program.  

How The Fast-Track Appeals Pilot Program Works

·      Inclusion into the Fast-Track Appeals Pilot Program should be requested via a petition.  

·      Once a petition is filed, a decision on the petition will be made no later than one month from the filing date of the petition.

·      The number of granted petitions may be limited to 125 granted petitions per quarter.  

·      Fast-track status may be removed due to any request by an appellant causing a delay in the conductor of the appeal, or an appellant’s withdrawal from the Fast-Track Appeals Pilot Program or the PTAB’s decision.

Take-aways  

Once a final rejection is mailed, it is not uncommon that one or more requests for continued examination (RCE) are filed to reopen the prosecution.   During the fiscal year of 2019, a total of 21,129 RCEs were filed.  (Source: USPTO).  The Fast-Track Appeals Pilot Program will likely contribute to shortening the pendency and reducing backlog of ex parte appeals significantly.  Ex parte appeals should be considered in a new light as an option to respond to a final rejection, in case where there is a concern as to the long pendency of ex parte appeals, one or more RCEs were already filed, a new review by the Board may be desirable to advance the prosecution, etc.   Furthermore, for an applicant who wish to expedite a PTAB decision for a pending appeal, the Fast-Track Appeals Pilot Program may be appealing in light of a petition fee of $400 and a six month to the decision.