By Dr. Michael A. Sartori, a Partner, and Matthew Welch, an Associate, in the Washington, DC office of Baker Botts L.L.P.
On July 2, 2020, the United States Patent and Trademark Office (“USPTO”) enacted the Fast-Tack Appeals Pilot Program (“Program”) to expedite the appeal process.1 Under the Program, the Patent Trial and Appeal Board (“PTAB”) plans to issue a Decision within six months from the date the appeal is entered into the Program, thereby reducing the lengthy appeal process which may be benefit certain Applicants. This article reviews the current appeal process, describes the Program, and explores the Program’s utilization.
Current Appeal Process
Under the current USPTO appeal process, an Applicant who receives an adverse patentability decision has the option of appealing to the PTAB if any claim has been rejected twice.2 The process begins when the Applicant files a Notice of Appeal.3 The Applicant then has a two-month period to file an Appeal Brief, and this period can be extended for up to five additional months.4 If the Examiner believes the application is not allowable, the Examiner responds with an Examiner’s Answer.5 To proceed with the appeal thereafter, the Applicant pays an Appeal Forwarding Fee, optionally files a Reply Brief, and optionally files a Request for Oral Hearing within two months of the date of the Examiner’s Answer.6 The PTAB next sends a Docketing Notice and eventually issues a Decision.7
Because the Examiner’s Answer and the PTAB Decision are not subject to statutory time periods, the time for an application to traverse the appeal process fluctuates and typically takes a considerable amount of time. In instituting the new Program, the USPTO acknowledged the lengthy appeal process, which has an average pendency at the PTAB of 15 months.8 Additionally, based on experience, the back-and-forth with the Examiner after filing the Notice of Appeal is approximately 9 to 15 months. Thus, the total time from filing a Notice of Appeal to receiving a PTAB Decision is approximately 24 to 30 months, or 2.0 to 2.5 years. To expedite this process, the USPTO implemented the new Program.9
New Fast-Track Appeals Program
Because of the success of prioritized examination,10 the USPTO enacted the Program to expedite review of appeals before the PTAB with the goal of rendering a decision on whether the appeal is accepted into the Program within one month and issuing a Decision within six months from when the appeal is entered into the Program.11 As a result, under the Program, the total time from filing a Notice of Appeal to receiving a PTAB Decision is reduced from approximately 24 to 30 months, or 2.0 to 2.5 years, to approximately 16 to 22 months, or 1.3 to 1.8 years.12
The Program went into effect on July 2, 2020, will remain active for a one-year probationary period, and is limited to 125 appeals per three-month quarter for a total of 500 appeals over this initial one-year period. To qualify for the Program, the application must be an original utility, design, or plant nonprovisional application, and the appeal must be an ex parte appeal for which a Notice of Appeal has been filed and for which the USPTO has issued a PTAB Docketing Notice. When filing an appeal under the Program, the Petition Fee of $400 is required, and the USPTO Form PTO/SB/451 should be used.
Within one month of filing the Petition to enter the Program, the USPTO will decide whether to grant the Petition. If granted, a Decision on the appeal will be made within six months from the grant date. Like the normal appeal process, Applicants may seek an Oral Hearing or rely on briefing alone. But once an Oral Hearing is scheduled under the Program, an Applicant may not reschedule and remain in the Program.
Utilizing the Fast-Track Appeals Program
The Program may be useful in multiple ways. For example, when an Applicant needs a patent decision quickly due to a short product life cycle, due to potentially infringing activity, or due to the need to secure funding. By reducing the pendency of the appeal, a patent decision can be obtained sooner.
The Program may also be useful if the application is examined by an Examiner type that has a low allowance rate and a typically long and costly prosecution (a so-called “Red Examiner”).13 Being able to circumnavigate a Red Examiner under the Program may be beneficial, especially if the Applicant desires a quick patent decision.
Furthermore, using statistics, an Applicant can decide whether it is worth the extra cost to apply for the Program when appealing. Based on research, applications assigned to a certain Examiner type (a so-called “Green Examiner”) have a better chance of success on appeal.14 Having a quick path to an appeal with the Program for such Examiners could be beneficial for an Applicant needing a patent sooner.
The Program may also be helpful to Applicants given the current economic conditions due to the COVID-19 pandemic. Historically, in prior recessions, Applicants have reduced patent filings and abandoned more applications, and this can be attributed to the contraction of the economy and, hence, contraction of patent budgets.15 To capitalize on valuable applications pending, a quick result on an appeal may produce a valuable patent sooner, thereby saving the patent budget in a difficult economic time.
However, for certain inventions like pharmaceutical innovations, a delayed issue date may be desirable, negating the need to use the Program. In this case, a longer appeal through the current appeal process may be acceptable and especially beneficial if coupled with the USPTO granting a positive Patent Term Adjustment due to the appeal delay, thereby increasing the patent term.16 Hence, before deciding whether to apply for the Program, an Applicant should consider how the patent is intended to be used.
In conclusion, the Program is a new strategic option that can help an Applicant shorten the appeal process, thereby achieving a patent decision sooner.
- Fast-Track Appeals Pilot Program, 85 Fed. Reg. 39,888 (July 2, 2020).
- 35 U.S.C. § 134(a); MPEP § 1204.
- 37 C.F.R. § 41.31; MPEP § 1204.
- 37 C.F.R. §§ 41.37(a), 1.136; MPEP § 1205.01.
- 37 C.F.R. § 41.39; MPEP § 1207.
- 37 C.F.R. §§ 41.45, 41.41, 41.47; MPEP §§ 1208-09.
- 37 C.F.R. § 41.50; MPEP § 1213.
- 85 Fed. Reg. 39,888; Appeal and Interference Statistics, Patent Trial and Appeal Board at 4, United States Patent and Trademark Office (Oct. 31, 2019) (“Pendency” is calculated as average months from Board receipt date to final decision.”).
- 85 Fed. Reg. 39,888.
- Implemented in 2011 and expanded in 2019, the Track One program expedites examination of patent applications and provides final decisions in 7.5 months on average, which is over 16 months faster than a normal application. USPTO Updates Effective Date of ‘Track One’ Fast-Track Patent Processing, United States Patent and Trademark Office (Sept. 23, 2011); USPTO’s Prioritized Patent Examination Program, United States Patent and Trademark Office (last visited Aug. 18, 2020); Faster at the USPTO: Expedited Patent Prosecution Processes at 11, United States Patent and Trademark Office (July 23, 2020) (finding that the average pendency for a Track One application is 1.1 months from filing to petition grant and 6.4 months from petition grant to final disposition); USPTO Performance and Accountability Report FY 2018 at 180, United States Patent and Trademark Office (last visited Aug. 14, 2020) (finding that the average pendency for an application at the USPTO is 23.8 months).
- 85 Fed. Reg. 39,888.
- The 16 to 22 months was calculated by adding the time for the briefing stage (9 to 15 months), the time waiting on a Decision regarding whether the appeal is accepted into the Pilot Program (one month), and the time the appeal is pending from acceptance into the Pilot Program to a PTAB Decision (six months).
- Dr. Michael Sartori & Matthew Welch, How USPTO Examiner Type Affects Patents: Part 1, Law360 (May 15, 2020); Dr. Michael Sartori & Matthew Welch, How USPTO Examiner Type Affects Patents: Part 2, Law360 (June 16, 2020).
- Dr. Michael Sartori & Matthew Welch, How USPTO Examiner Type Affects Patents: Part 3, Law360 (July 15, 2020).
- Matthew Welch, Five Predictions on How the COVID Financial Crisis Will Impact Patent Prosecution, Baker Botts Insights (May 26, 2020).
- 35 U.S.C. § 154(b); MPEP § 2730.