May 16, 2022

Volume XII, Number 136

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May 13, 2022

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Expedited Patent Appeal Pilot Program: Intellectual Property

On June 15, 2015, the U.S. Patent and Trademark Office (USPTO) announced it was starting an Expedited Patent Appeal Pilot Program effective June 19, 2015. Under the Expedited Patent Appeal Pilot, an appellant can file a petition to have an appeal made special if the appellant also withdraws an appeal in a copending application. The USPTO’s goal is to render a decision on the Petition to Make Special within two months of filing the petition and to issue a decision on appeal no later than four months from the date the Petition to Make Special is granted. Currently, decisions on appeal are, on average, issued more than two years after an appeal is docketed.

The USPTO will accord special status to an appeal pending before the Board under the following conditions: a certification and petition under 37 C.F.R. § 41.3 must be filed via EFS-Web; the petition must include a request for withdrawal in another application; both the appeal to be made special and the withdrawn appeal must have had a docketing notice mailed no later than June 19, 2015; the petition must be filed before the appeal to be withdrawn has been taken up for decision; there must be no request for oral hearing, or any request for oral hearing in the expedited appeal must be withdrawn; the appellant must agree not seek a refund of any appeal fees, including oral hearing fees; the appeal to be expedited and the appeal to be withdrawn must be owned by the same party as of June 19, 2015 or name at least one common inventor; and the petition must be signed by a registered practitioner who has power of attorney or has authority to act in both applications.

The USPTO has created a fillable PDF form, Form PTO/SB/438 for use in filing a certification and petition. The $400 fee for filing a petition under 37 C.F.R. § 41.3 is waived for a petition to make an appeal special. The pilot program is not available for making ex partereexaminations special, as ex parte reexaminations are already handled with special dispatch.

Withdrawal of an appeal in which there are no allowed claims will result in abandonment of the application upon filing the withdrawal. Therefore, if an appellant wants to continue prosecuting such a withdrawn application, it must file a Request for Continued Examination (RCE) with a valid submission at the time of filing the petition.

The Expedited Patent Appeal Pilot will run until 2,000 appeals have been accorded special status or until June 20, 2016, whichever occurs earlier. The USPTO may optionally extend or discontinue the Pilot program depending on the results.

© 2022 McDermott Will & EmeryNational Law Review, Volume V, Number 183
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About this Author

Bernard P. Codd, McDermott WIll Emery Law Firm, Intellectual Property Attorney
Partner

Bernard P. Codd is a partner in the law firm of McDermott Will & Emery LLP and is based in the Washington, D.C., office.  He focuses his practice on patent prosecution and opinions in the areas of semiconductor device and manufacturing, battery, fuel cell, photolithography, chemical, metallurgy, and polymer technologies.

202-756-8182
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