August 8, 2020

Volume X, Number 221

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USPTO Makes the Patent “Fast-Track” Faster

The Patent Trial and Appeal Board (PTAB) is now accepting petitions for expedited resolution of ex parte appeals. Launched last week, the “Fast-Track Appeals Pilot Program” aims to decide the average patent appeal within six to eight months faster than the current average.

The year-long program will grant no more than 125 petitions per quarter and just 500 total per fiscal year. In order to keep appeals on schedule, oral hearings under the program will be expedited and, once scheduled, will not be rescheduled or relocated. The required petition fee has been set at a modest $400.

Patent applicants traditionally have opted to continue wrestling with a challenging examiner rather than be held up even longer by the appeal process. If this new fast-track program delivers decisions as quickly as advertised, there could be a considerable shift in thinking among patent applicants in all industry sectors but particularly in rapidly changing, highly competitive sectors, such as the high tech industry.

The Fast-Track Appeals Pilot Program can be seen as an extension of the current Track One prioritized examination program, which has drastically reduced the patent review process. With the two “faster” programs in place, applicants should be able to obtain a decision on their patent in about half the time, according to the USPTO.

However, expediting the appeal process is only beneficial if the patent case is well-prepared by experienced legal counsel who can make strong arguments that support patentability. Patent applicants interested in the Fast-Track Appeals Pilot Program should work closely with legal counsel before appealing. No new evidence or substantive amendments, for example, can be entered for an appeal, so it remains important to review and further prepare the file of the pending patent application with counsel prior to initiating any such appeal. Most importantly, quality counsel will be able to help clients decide if an expedited appeal may be the best next step.

Copyright © 2020 Womble Bond Dickinson (US) LLP All Rights Reserved.National Law Review, Volume X, Number 188


About this Author

Jeffrey S. Whittle Partner Womble Houston Corporate Law, IP Law, Patent Law,

Jeffrey Whittle provides over two decades of legal experience to clients in the energy and high tech industries. He advises on strategic and complex technology transactions, licensing, patent protection, portfolio analysis, and other contentious and transactional intellectual property matters including inter partes reexaminations, post-grant reviews, and derivation proceedings, among other disputed cases. Jeffrey leads Womble Bond Dickinson’s International IP Energy Group and serves as Managing Partner of the firm’s Houston office.

Jeffrey has been recognized by Chambers USA in the...

Samuel A. Savanich Intellectual Property Attorney Womble Bond Dickinson Houston, TX

Sam is a member of the Intellectual Property group, and his practice focuses on advising clients on patent strategy related to electrical and computer engineering. Sam regularly drafts patent applications and office action responses relating to several different technologies, such as software, mechanical, and other computing technologies.

In his previous role as Patent Counsel at Hewlett-Packard Enterprise, Sam most recently managed the mechanical patent portfolio. Prior to managing the mechanical patent portfolio, Sam managed the tape storage portfolio and processor portfolio. He also assisted in standards, litigation, transactional, and other server and storage related projects.