Expedite Your Appeals - Abandon One Appeal And Receive Priority on Another
June 29, 2015

A new pilot program at the Patent Trial and Appeal Board (PTAB) allows Appellants with multiple ex parte appeals to accelerate their appeals on a one-for-one basis. Appellants can accelerate one appeal by withdrawing an appeal of another application. According to the United States Patent and Trademark Office, the program is expected to reduce the backlog of appeals pending before the Board and provide Appellants with greater control over the order in which their appeals are decided. By advancing an application out of turn, Appellants are now given the option to drop pending appeals that are no longer a priority or are no longer important to them. 

The Expedited Patent Appeal pilot program is expected to reduce the pendency of appeals that can last more than thirty months to six months or less. The expedited schedules are possible in part because the program requires Appellants to waive their rights to oral hearings and their rights for refunds if oral hearing fees have been paid.

Unlike other pilot programs run by the Patent Office, this pilot program is run by the PTAB. To participate in the program the PTAB created a fillable form (Form PTO/SB/438) and has waived the petition fees that are usually required to participate.

One of the notable risks of joining this program is that an appealed application previously accorded special status will no longer be accorded special status if prosecution continues after a decision issues. Additionally, applications withdrawn to qualify for the program will be considered abandoned as of the date on which the appeal is withdrawn unless there are allowed claims.

Given the stringent requirements of this program, the program will not likely benefit the occasional filers, but may serve the interests of large-scale Appellants that file many appeals. The program launched on June 19, 2015 and will run until 2,000 appeals have been granted expedited status or until June 20, 2016, whichever comes first.

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If you have any questions or wish to discuss how this decision may impact your business, please contact one of our Patent Prosecution Attorneys.