7/22/20

Intellectual Property Alert: Cutting the Line to the Appeal Board: A New Pilot Program to Expedite PTAB Decisions

Related Practices

Attorneys & Professionals

In a complement to the other fast-track programs offered by the United States Patent and Trademark Office (USPTO), the Ex Parte appeals process before the Patent Trial and Appeal Board (PTAB) has been similarly revamped recently with a new pilot program that offers faster patent appeals decisions for a modest fee.

During patent examination, claims that have been twice rejected by the USPTO can be challenged by appealing to the PTAB.  In normal course, an applicant can file a Notice of Appeal, which starts a two-month deadline to file an appeal brief.  Upon receipt of the appeal brief, an examiner has two months to issue a reply brief, at which point the applicant can respond to the examiner’s reply brief (which is often followed by a supplemental examiner reply), or pay a fee to forward the appeal to the PTAB for consideration. Following a decision favorable to the applicant, examiner rejections can be overruled or modified, which can lead to the re-opening of prosecution or, in some cases, allowance of claims.

The appeals process is often a genuine last resort for intractable examiners or issues of legal interpretation, but has historically been a time-consuming process that takes on average 14 months to receive a final disposition from the PTAB. 

The “Fast-track Appeals Pilot Program,” enacted July 2, 2020, seeks to decrease pendency for the last step in the appeal process by prioritizing appeals for applicants who file a petition and a modest $400 fee when forwarding the appeal to the PTAB.  The Fast-track Pilot Program will not affect the timeline prior to submission to the PTAB, which remains on the order of about 9-12 months if extensions of time are utilized.  However, the Program has targeted a final decision from the PTAB within 6 months. 

In the pilot stage, the USPTO has limited the number of granted petitions to 125 per quarter for the duration of the Fast-Track Appeals Pilot Program, which is expected to run for one year.

Accordingly, the fast-track path may be a worthwhile option for expediting appeals, particularly for applicants willing to brave the uncertainty of appeal, but not the exceptional wait times.