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Expediting PTAB Appeals Using the Fast-Track Program

The U.S. Patent and Trademark Office (USPTO) recently released statistics about its Fast-Track Appeals Pilot Program. The program went into effect on July 2, 2020 and is currently slated to run until the earlier of July 2, 2021 and 500 appeals being accepted into the program. Any ex parte appeal pending at the Patent Trial and Appeal Board (PTAB) is eligible for this program, so it is worthwhile for patent applicants to keep it in mind as an option to speed PTAB appeal.

The Fast-Track program aims to expedite PTAB decision to within 6 months of acceptance into the program. PTAB appeals typically take 13-15 months to decision, per USPTO statistics provided here and here.  Under the Fast-Track program, PTAB decisions have issued after 1.9 months on average.  Acceptance into the program is also fast, averaging just 1.5 days after petition filing.  Up to 125 applications can be accepted into the program each quarter, with the USPTO’s Fast-Track program page providing current acceptance numbers to help potential program participants.

Requirements to apply for the Fast-Track program are:

  • The patent application must be an original utility, design, or plant nonprovisional application.
  • The application must be currently pending before the PTAB with a docketing notice having been issued.
  • The application is not currently being treated as special under MPEP § 708.01 (see also 37 CFR 1.102 for the requirements of making an application special).
  • File a petition for acceptance into the program. The USPTO recommends using their one-page form.  The filer must have power of attorney or be the appellant prosecuting their own case.
  • Pay $420 fee. There is no discount for micro or small entities.

Unlike the USPTO’s 2015-2016 Expedited Patent Appeal Pilot, the Fast-Track program does not have any effect on any of the appellant’s other pending appeals.  The Expedited Patent Appeal program only allowed a pending PTAB appeal to be expedited for decision if the same appellant withdrew another pending appeal.

The Fast-Track program’s special status only applies to an application for the duration of appeal, but it is still a useful tool to help move an application through prosecution as quickly as possible. More information about the Fast-Track program is available in the Federal Register notice announcing the program and on the USPTO’s Fast-Track program page.

©1994-2021 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume XI, Number 57
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About this Author

Christina Sperry, Mintz Levin Law Firm, Boston, Medical Tech and Intellectual Property Law Attorney
Member

Christina is an experienced patent attorney whose clients are focused in the medical technology space, from start-ups to large corporations and academic institutions. She advises on patent preparation and prosecution and provides opinions on infringement, validity, and right-to-use for clients in the US and internationally.

The areas of technology in which Christina is particularly focused include mechanical, electrical, and electro-mechanical technical fields such as medical and surgical instruments and devices including endoscopic, soft tissue...

617-348-3018
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