The U.S. Patent and Trademark Office (USPTO) continues to roll out new pilot programs. Its latest, the “Fast-Track Appeals Pilot Program,” seeks to speed up the resolution of ex parte appeals. 

The Fast-Track Appeals Pilot Program took effect on July 2, 2020. Under the program, an appellant who has filed an ex parte appeal before the Patent Trial and Appeal Board (PTAB) and received a notice that the appeal has been docketed may file a petition, accompanied by a petition fee, to expedite the review of his or her appeal. According to the USPTO, it expects that the average ex parte appeal reviewed under the new pilot program will be decided within six months from the date a petition is granted. Currently, the average appeal pendency is about 15 months. 

“The Fast-Track Appeals Pilot Program serves as an extension of the Track One prioritized examination program, which has proven to be very popular with our nation’s innovators,” Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, said in a press statement. “For the first time in USPTO history, applicants will be able to speed up both patent examination and ex parte appeals, thus obtaining decisions on their most important inventions in about half the time of a typical application."

Eligibility for Fast-Track Appeals Pilot Program

As set forth in the Federal Register Notice, the following four conditions must be met to qualify for fast-track status:

  • Application type: The application must be an original utility, design, or plant nonprovisional application.
  • Status of appeal: The appeal for fast-track status must be an ex parte appeal for which a notice of appeal has been filed and a PTAB docketing notice has been issued by the USPTO (i.e., the appeal is pending before the PTAB).
  • Petition: The appellant must file a petition via the USPTO’s electronic filing system identifying the application and appeal by application number and appeal number, respectively, for which fast-track review is sought. The following form is required: Petition—Fast-Track Appeals Pilot Program (Form PTO/SB/451)
  • Fee: The appellant must pay a $400 fee with the petition.

Fast-Track Appeal Process

A petition may be filed anytime between (1) the date when the PTAB issues a notice that the appeal has been docketed to the PTAB, and (2) the date at which a final decision is rendered by the PTAB, or PTAB jurisdiction otherwise ends. Petitions for fast-track status may be filed for ex parte appeals regardless of whether the appeal is newly docketed or was docketed previously. If the petition complies with the formal requirements (e.g., signature, identification of application) and is accompanied by the required fee, the appeal will be given fast-track status in accordance with current procedures.

An appellant may not reschedule the date or time of a hearing and remain in the Fast-Track Appeals Pilot Program. If an appellant in an ex parte appeal accorded fast-track status must reschedule the date or time of a hearing and is not willing to waive the oral hearing, then the appellant may opt out of the Fast-Track Appeals Pilot Program, thereby regaining the ability to reschedule or relocate the hearing as per ordinary PTAB hearing procedures. In such cases, the appellant will not be entitled to a refund of the petition fee.

What’s Next?

Petitions to request inclusion of an ex parte appeal in the pilot program will be accepted until 500 appeals have been accorded fast-track status under the program, or until July 2, 2021, whichever occurs earlier. According to the USPTO, it will evaluate the Fast-Track Appeals Pilot Program at the conclusion of this period or to determine if it should be made permanent. 

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, David Einhorn, or the Scarinci Hollenbeck attorney with whom you work, at 201-896-4100.