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Patent appeal board’s new pilot program hopes to reduce backlog of appeals

By Jessica Karmasek | Jun 23, 2015


WASHINGTON (Legal Newsline) - A new pilot program by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board will allow those with multiple appeals before the board to expedite review.

The PTAB is an administrative law body of the PTO that decides issues of patentability. It was formed in September 2012 as part of the America Invents Act.

Under the board’s new Expedited Patent Appeal Pilot, announced Friday, appellants with multiple ex parte appeals pending before the PTAB can speed up review of one appeal in return for withdrawing another appeal.

According to the PTO, the pilot program will allow appellants having multiple ex parte appeals pending before the board to have “greater control” over the priority with which their appeals are decided.

The program also hopes to reduce the backlog of appeals pending before the PTAB.

The PTAB will accept petitions for participation in the pilot program until June 20, 2016, or until the board grants 2,000 petitions -- whichever occurs first.

Appellants wishing to participate in the pilot program need only make a certification and file a petition to the chief judge.

In particular, as part of the petition process, an appellant must certify that docketing notices were issued for the appeal to be made special and the appeal to be withdrawn before June 19, 2015, and that both applications underlying the identified appeals are owned by the same party as of June 19, 2015 or name at least one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.

Additionally, the appellant must agree to waive any requested oral hearing in the appeal to be made special, 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appeal to be made special and any appeal fees, including oral hearing fees, paid in connection with the appeal to be withdrawn will not be refunded.

The PTO said it has waived the petition fee and provided a form-fillable PDF -- Form PTO/SB/438 -- for use in filing the certification and petition.

The PTAB said the goal is to issue a final decision on the appeal to be made special within six months from the date that the petition is filed.

For more information about the pilot program and how to participate, please click here.

From Legal Newsline: Reach Jessica Karmasek by email at

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