By: Thomas Lingard
Earlier this month, the USPTO announced the new Fast-Track Appeals Pilot Program. Under this program, for a small fee, an ex parte appeal may be advanced out of turn. The stated target of the USPTO is to issue a decision within six months from the date the petition is granted. The goals of the Program are clear – speed up the appeal process for certain appeals. However, based on the low barrier to entry, what is unclear is why anybody would not apply for this Program. In reality, it is likely that the fastest practitioners and inventors will be the ones to take advantage of it.
The Program is available for utility, design, or plant nonprovisional applications. The petition form outlines five requirements:
- Fill out the proper form
- Have an existing appeal for which a docketing notice has been issued
- File the $400 fee
- The appeal at issue is not treated as special
- The practitioner has power of attorney
The USPTO is limiting the number of appeals entered into the Program to 500 total and 125 per quarter, which represents approximately 8% of new appeals per year.
The published statistics of the PTAB indicates that the average pendency of an appeal is about 15 months, depending on the technology center. Thus, this Program strives to produce a decision approximately 9 months faster than average.
Appeals are expensive. In addition to over $3,000 in filing fees for a large entity, they often involve thousands of dollars in legal fees, easily reaching over $10,000. Compared to these amounts, the relatively small $400 petition fee makes applying for this program a no-brainer. Because of the extra time and expense involved in an appeal, inventors typically appeal their most important cases. If an appeal is important enough to spend $10,000 on, then it is important enough to spend an extra $400 to get an answer faster.
This Program is a good step toward more speedy resolution of important appeals. However, because its only real barrier to entry is a marginal $400 fee, there is no real incentive not to apply. The largest limitation of this Program will likely be the cap on the number of accepted appeals.
However, because this program is so cheap, it is likely that more than 8% of inventors filing appeals will want to apply to enter it, easily filling up the 125 cases per quarter. The Program does not really speed up important appeals, but simply rewards the fastest practitioners and inventors to take advantage of it. As the USPTO reviews this Program, it seems likely that the program will be changed, either by increasing the application fee or providing other requirements similar to the existing petition to make special. In the meantime, for any practitioners and inventors that have current appeals, sign up before it’s too late!
Thomas Lingard is a registered patent attorney. His practice focuses on preparing and prosecuting domestic and foreign patent applications in a variety of technological areas. Mr. Lingard has experience in identifying products that potentially infringe his client’s patents, as well as preparing patentability and patent infringement opinions.