New USPTO Pilot Program Provides Streamlined, Expedited Patent Appeals for Small and Micro Entity Ap

On September 18, 2015, the U.S. Patent and Trademark Office (USPTO) introduced a Pilot Program providing streamlined, expedited patent appeals before the Patent Trial and Appeal Board (PTAB) for “small entity” and “micro entity” applicants.  The program is appropriately named “Streamlined, Expedited Patent Appeal Pilot for Small Entities”.  This pilot program, along with the Expedited Patent Appeal Pilot instituted June 15, 2015, will assist the PTAB in efficiently reducing the overall inventory of pending appeals.  Streamlining appeals by small and micro entity applicants is also intended to accelerate the time frame for issuing patents to these applicants and bringing patented inventions to market, encouraging follow-up innovation, economic growth, and job creation.

To support the policy goals of this pilot program the PTAB will issue a decision to grant a petition to make an appeal special under the program no later than two months from the petition filing date and a decision on the appeal itself will be made no later than four months from the grant date of the petition to make special.  The program is available for ex parte appeals if the applicant has only a single appeal pending before PTAB as of September 18, 2015, and the applicant agrees to streamline the appeal process.  A petition to make special under this program is limited to the PTAB appeal and does not extend to other stages of the prosecution.  This differs from a general petition to make an application special under 37 CFR 1.102 and MPEP 708.02 in which “special” status and out-of-turn examination applies throughout the entire course of examination.

“Streamlining” the appeal involves establishing and/or confirming the following prerequisites and conditions:

1. The certification and petition to make special must be filed electronically using the USPTO's EFS-Web system. The USPTO has prepared Form PTO/SB/441 for these petitions.

2. The applicant must confirm “small entity” or “micro entity” status in the appealed application and certify the status remain accurate.

3. The applicant agrees to disposition of all claims subject to each ground of rejection as a single group.

4. The applicant certifies the appeal to be made special does not involve any claim subject to a Section 112 rejection (e.g., lack of written description, enablement, or best mode, or for indefiniteness).

5. The applicant agrees to waive any oral hearing in the appeal and acknowledges any oral hearing fees originally submitted with the appeal are forfeited.

No petition fee is required when filing the petition to make special. The Streamlined, Expedited Patent Appeal Pilot for Small Entities is scheduled to run until 2000 appeals are accorded special status, or until September 16, 2016, whichever occurs first.