USPTO Introduces Expedited Patent Appeal Pilot for Small Entities

After a summer hiatus, IP Spotlight is back.  This week we will review some of the more significant business-related developments in intellectual property law over the last few months.

First up:  On September 15, 2015, the USPTO introduced a Streamlined, Expedited Appeal Pilot for Small Entities, a procedure by which small entities (and micro entities) can speed up the process of appealing a final rejection of their patent application. Unlike traditional appeals, which often sit for 2-3 years waiting for a Patent Trial and Appeal Board decision, the USPTO’s goal for the streamlined appeal pilot is to act on a petition to enter the streamlined appeal pilot within two months, and to render a final decision within four months after acting on the petition.

The pilot is only available to small entities and micro entities who have no more than one appeal pending before the Board. In addition, appeals that involve a rejection on the basis of lack of written description, enablement, indefiniteness or best mode are not eligible for the pilot. No fee is required to file a petition for expedited appeal under the new pilot. The pilot is open to the first 2,000 petitioners.

Although an expedited appeal can save patent applicants both time and money, applicants should consider the potential drawbacks before entering the pilot program. Specifically:

  • The applicant must agree that, for each ground of rejection, the Board may select a single claim and decide all claims that are subject to that ground in the same way that it decides the selected claim. This could be risky for applicants who are challenging a patent-eligibility rejection, since it allows the Board to uphold a rejection of all claims without assessing the potentially significant details of any dependent claims.
  • The applicant must agree to waive an oral hearing.

Because of this, the streamlined process may be valuable where the only issue is a rejection on the basis of novelty or obviousness and the applicant’s argument is strong for the broadest claim. In other situations, patent applicants should think carefully before submitting their applications to the new pilot program.

Full details about the USPTO’s Streamlined, Expedited Appeal Pilot for Small Entities are available here:  http://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/streamlined-expedited-patent-appeal-pilo-0.

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