On July 2, 2020, the U.S. Patent and Trademark Office announced a new pilot program called the Fast-Track Appeals Pilot Program to expedite ex parte appeals. The appellant may use form PTO/SB/451 when filing the petition.
Under the pilot program, the Patent Trial and Appeal Board (PTAB) will issue a decision on appeals for U.S. patent applications within six months, which is significantly shorter than the current average appeal pendency of 14 months. The USPTO hopes the program will “hasten patentability determinations on new inventions and the pace at which products or services embodying these inventions are brought to the marketplace, thus spurring follow-on innovation, economic growth, and job creation.” ( https://www.federalregister.gov/documents/2020/07/02/2020-14244/fast-track-appeals-pilot-program)
The prioritized examination program, known as Track 1, has been successful; however, the application’s prioritized status does not carry through to any appeal. The pilot program fills this gap, allowing for an applicant to expedite most appeals, including those involving applications examined under Track 1.
The pilot program is available for any original utility, design, or plant non-provisional application. The program is not available for any application already treated as special during appeal such as reissue applications, re-examination proceedings; appeals made special due to the age or health of the applicant, or appeals subject to any other pilot program that advances an appeal out of turn.
Under the program, the appeal must be pending before the PTAB, meaning that a Notice of Appeal must have been filed, and a PTAB docketing notice must have already been received in order to petition for expedited review.
While an oral argument is permitted under the program, the appellant must opt-out of the pilot program if they wish to change the date or time of the oral argument selected by the PTAB. The appellant may also waive the hearing and continue under the pilot program. Once a notice of hearing is received, the appellant cannot seek to relocate the hearing but may request to attend the hearing by videoconference or phone.
It’s worth mentioning that the Fast-Track Appeals Pilot Program is offered temporarily; the USPTO will expedite only 125 appeals per quarter, and the program is set to expire once 500 appeals have been expedited or by July 2, 2021 (whichever occurs first). The threshold of 500 granted petitions corresponds to approximately 8% of the total number of new appeals received in the average fiscal year and was chosen in accordance with maintaining the PTAB’s overall decision pendency goals.
The Federal Register Notice warns that the petition fee is non-refundable and advises applicants to monitor the number of granted petitions before submitting a petition. The notice advises that petitions will be decided in the order of receipt, and while applicants will be allowed to correct any deficiencies, petitions will be decided based on the date of receipt of the corrected grantable petition. The PTAB will communicate the number of granted petitions for fast-track appeal via the PTAB website. (www.uspto.gov/PTABFastTrack)
In summary, to qualify, an appellant must satisfy four conditions:
- The application must be a utility, design, or plant non-provisional application.
- The request for fast-track status must be for an ex parte appeal for which a notice of appeal has been filed, and a Patent Trial and Appeal Board (PTAB) docketing notice has been issued by the USPTO.
- The appellant must file a petition under 37 C.F.R. § 41.3.
- a $400 fee must be paid.
Innovators filing patent applications that are particularly valuable and ready for commercialization may consider utilizing the Track 1 prioritized examination and the new Fast-Track Appeals Pilot Program.