Editor: Adriana L. Burgy
On June 19, 2015, the Patent Trial and Appeal Board (Board) launched an Expedited Patent Appeal Pilot (EPAP) program. The EPAP program’s goal is to reduce the backlog of appealed applications and shorten the pendency of an appeal to the Board.
Typically, patent appeals are taken up by the Board in the order in which they are docketed; the current average pendency of an ex parte appeal is around 30 months. With EPAP, however, appellants who have multiple appeals pending before the Board may file a request to make special one of the pending appeals, therefore expediting its consideration by the Board, on the condition that the appellant withdraws a co-pending appeal in either another application, or an ex parte reexamination with an ex parte appeal.
To participate in EPAP, an appellant must file a petition to make special under 37 C.F.R. 41.3 (Form PTO/SB/438) to the Chief Administrative Patent Judge. The USPTO waives the petition to make special fee in this instance. The petition, however, must be signed by a registered practitioner who has a power of attorney for the application involved in the appeal to be made special and for the application or patent under reexamination involved in the appeal to be withdrawn.
In the petition, appellant must:
- Certify that docketing notices were issued for the appeal to be made special and the appeal to be withdrawn before June 19, 2015, and that both applications underlying the identified appeals are owned by the same party as of June 19, 2015, or name at least one inventor in common;
- Agree to waive any requested oral hearing in the appeal to be made special; and
- Acknowledge that any oral hearing fees paid in connection with the appeal to be made special and any appeal fees, including oral hearing fees, paid in connection with the appeal to be withdrawn will not be refunded, and agrees not to request a refund of any such fee.
The Board’s goal for handling an EPAP application is to:
- Render a decision on the petition to make the appeal special no later than 2 months from the filing date of the petition; and
- Render a decision on the appeal made special no later than 4 months from the date a petition to make an appeal special is granted.
The USPTO adopted EPAP on a temporary basis, i.e., until two thousand (2,000) appeals have been accorded special status under EPAP, or until June 20, 2016, whichever occurs earlier. As with other pilot programs, the USPTO may extend the pilot program, depending upon its results.
As of September 9, 2015, the USPTO statistics indicate that twenty-one petitions have been filed, with nineteen of those petitions granted. The Board mailed six decisions on appeals made special. On average, the Board renders a decision on a petition to make the appeal special two days after it is filed, and generally renders a decision on the appeal made special one month after the petition is granted.
For more information on the EPAP program at the USPTO website, click here.
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