How to “Fast-Track” a Patent Appeal

The owner of a patent application who is dissatisfied with an Examiner's rejection may Appeal to the Patent Trial & Appeal Board (PTAB or Board) for review.

The Appeal is reviewed by a “fresh pair of eyes,” namely a panel of three administrative judges, who have relevant technical backgrounds. The Appeal results in a PTAB decision affirming or reversing the Examiner. The ex parte appeal process includes the following steps:

• Step 1: Adverse Decision of the Examiner
• Step 2: Notice of Appeal
• Step 3: Appeal Brief
• Step 4: Examiner’s Answer
• Step 5: Appeal Forwarding Fee + Reply Brief (optional)+ Request for Oral Hearing (optional)
• Step 6: Appeal Docketing Notice
• Step 7: Board decision

Appealing a rejected patent application can take years. The average time between Step 6 and Step 7 of an appeal is a whopping 1.5 to 2 years.

To shorten the ex parte patent appeal process, the USPTO has launched the “Fast-Track” Appeals Pilot Program. Under this program, an appellant can have their appeal advanced out of turn and reviewed by the Board before other prior-filed appeals. A Board decision is typically rendered in a matter of months from the date your Fast-Track petition is granted.

The Fast-Track Appeals Program runs until July 2, 2024. After that date, the program may be extended or discontinued.

Eligibility requirements

To qualify for Fast-Track status, the following conditions must be met:

1. Application type: Must be original utility, design or plant nonprovisional application.
2. The Appeal Docketing Notice has been mailed (Step 6, above).
3. A petition Fast-Track Appeals Pilot Program (Form PTO/SB/451) has been filed the fee has been paid.
4. Not more than 125 Fast-Track petitions have been granted in any given quarter. The USPTO will communicate the current number of granted petitions via the PTAB website, and appellants should take this information into account when making decisions on whether to file a petition.

Conclusion

The “Fast-Track” Appeal Program is a straightforward and cost-effective option for patent applicants interested in accelerating the ex parte appeals process.