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Expedited Patent Appeal Pilot – Frequently Asked Questions
- What does it mean to make an appeal “special”?
In this context, the ex parte appeal made special is advanced out of turn to expedite its processing.
- If a single entity has several ex parte appeals pending before the PTAB, can it apply to use the pilot program more than once?
Yes; however, the withdrawal of an appeal in an application or ex parte reexamination may not form the basis for more than one petition to make special under the Expedited Patent Appeal Pilot, including a petition to make special for a subsequent appeal in the application for which a petition to make an appeal special was granted, or any continuing application of the application for which a petition to make an appeal special was granted.
- How much time, in terms of the processing of my appeal, will this program really save me?
While the nature judicial administration does not afford precise estimates, the current average pendency of an ex parte appeal is roughly 30 months. Appeals selected for this pilot would typically be decided within 6 months of being approved for the program.
- How complicated is it to apply to participate in the pilot?
PTAB has created a simple fillable form (Form PTO/SB/438) to apply to participate in the pilot.
- If my petition is granted and I am approved to utilize the pilot program, will the fees I already paid for the appeal I withdraw be refunded?
- Why do I have to withdraw an appeal to obtain in order to expedite the other appeal I have pending?
The pilot was designed to reduce the existing PTAB backlog of ex parte appeals. In exchange for permanently withdrawing one pending ex parte appeal, the applicant will receive expedited processing of another pending ex parte appeal.
- Do I get to pick the appeal that is dropped and the appeal that is expedited?
Yes. However, the PTAB must have mailed a docketing notice for both appeals no later than June 19, 2015, and both ex parte appeals must be pending before the Board at the time of application to participate in the pilot.
- Can I still request an oral hearing for the appeal I request to be expedited?
No. To be approved to participate in this pilot, no oral hearing can be requested and, if it has been requested, the request must be withdrawn.
- Can I withdraw an appeal in an ex parte reexamination proceeding to qualify for this pilot?
Yes, withdrawal of an appeal in an ex parte reexamination proceeding pending before the PTAB would qualify an applicant to expedite a pending ex parte appeal in an application under this pilot.
- How long will this pilot program be available?
Unless the pilot is extended, it will end on June 20, 2016 or until 2,000 ex parte appeals are accorded special status under the program, whichever occurs first.
- Is there a fee associated with applying to participate in this pilot?
No. Although the request to participate in the Expedited Patent Appeal Pilot is made by way of a petition to the Chief Judge under 37 C.F.R. § 41.3, the Office has waived the petition fee.
- Will the application in which the appeal was made special remain in special status when the application is returned to the Examiner?
No. MPEP § 1203 provides that an application made special and advanced out of turn for examination will continue to be special throughout its entire course of prosecution in the Office, including appeal, if any, to the Board. An appeal that is accorded special status for decision on an appeal to the Board under the Expedited Patent Appeal Pilot will be advanced similarly out of turn for a decision on the appeal by the Board. The difference between the Expedited Patent Appeal Pilot and an application made special under 37 C.F.R. § 1.102 and MPEP § 708.02 is that an application in which an appeal is accorded special status for decision on an appeal to the Board under the Expedited Patent Appeal Pilot will not have a special status under 37 C.F.R. § 1.102 and MPEP § 708.02 after the decision on the appeal.
- Can I file a request for continued examination (RCE) in the application for which the appeal is to be withdrawn?
Yes, assuming an RCE is otherwise available in the application. The RCE should be filed with the petition under 37 C.F.R. § 41.3 if there are no allowed claims in the application to ensure that the RCE is filed prior to the abandonment of the application that will result from the dismissal of the appeal when there are no allowed claims in the application.
- Must a submission be included in an RCE filed in the application for which the appeal is to be withdrawn?
Yes. An RCE must include a submission (37 C.F.R. § 1.114(a) and (c)). An appeal brief, or a reply brief, or related papers, are not considered a submission (37 C.F.R. 1.114(c)), but the submission may consist of the arguments in a previously filed appeal brief or reply brief, or may simply consist of a statement that incorporates by reference the arguments in a previously filed appeal brief or reply brief (MPEP § 706.07(h)).
- Can I file a petition under 37 C.F.R. § 41.3 after filing an RCE in an application on appeal and the withdrawal of the appeal in that application be treated as the withdrawal of the appeal for purposes of a petition to make special for an appeal in another application under the Expedited Patent Appeal Pilot?
No. The withdrawal of an appeal resulting from the filing of a request for continued examination prior to the filing of a petition under 37 C.F.R. § 41.3 may not form the basis for a petition to make special based upon the Expedited Patent Appeal Pilot.