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Amy E. SchmidPartner

Streamlined, Expedited Pilot Program for Small/Micro Entities with a Pending Appeal

Amy E. Schmid
September 21, 2015

A new USPTO pilot program, effective September 18, 2015, will allow small or micro entity appellants to enjoy expedited consideration of an ex parte appeal by the Patent Trial and Appeal Board (PTAB). Consideration under the program requires a Petition to Make Special (see Petition to Make Special- Streamlined, Expedited Patent Appeal Pilot for Small Entities), including the following specific requirements:

  1. The appellant must be a small or micro entity.
  2. The appellant must have only one appeal pending before the PTAB as of September 18, 2015, and the appeal must have been docketed with the PTAB on or before September 18, 2015.
  3. The appellant must agree to the disposition of all claims subject to each ground of rejection as a single group.
  4. The appellant must waive any request for oral hearing, and agree to the loss of any previously paid oral hearing fees.
  5. The appeal must not involve any rejections for lack of written description, enablement, best mode, or indefiniteness.

The program will run until 2,000 appeals have been afforded special status under the program, or until September 16, 2016, whichever occurs earlier. For any appeals which are afforded special status under the pilot program, the PTAB will seek to render a decision on the petition to make the appeal special within two months from the filing date of the petition, and will seek to render a decision on the appeal no later than four months from the date the petition is granted. The current pendency for decided appeals is between 2-3 years, varying by technology, as shown below:

Technology CenterAverage Months from Docketing Notice to Board Decision

The USPTO hopes the pilot program will reduce the backlog of appeals at the PTAB, and also spur economic growth, job creation and follow-on innovation, by accelerating the speed of appeals, and perhaps expediting allowance of the patent and the introduction of the invention to the market. The USPTO acknowledges that the program may be terminated at the end of the pilot program, or extended temporarily or permanently, depending on the results.