New Pilot May Not Accelerate Post-Grant Matters

Last week the United States Patent and Trademark Office (USPTO) announced plans for the Patent Trial and Appeal Board (PTAB) to begin accepting petitions for expedited resolution of ex parte appeals. The program, entitled “Fast-Track Appeals Pilot Program” launched July 2, 2020. (here)

But, the program may not benefit all appellants. And it is important to understand that the program is not offering an appeal timeline (start to finish) that spans 6 months.

First, the USPTO expects that the average ex parte appeal reviewed under the Fast-Track Appeals Pilot Program will be decided within six months from the date a petition is granted. But, reexamination, reissue, and supplemental examination appeals are already decided (on average) in 5 months. As such, patent application appeals will be the primary beneficiaries of the Pilot.

But even for application appeals, it is important to realize that under no circumstances will an appeal process—from start to finish—conclude within 6 months. The fast-track program only accelerates the back end of the appeal process. In other words, the back-and-forth briefing process with the examiner will still proceed at its normal (unpredictable) pace. The unpredictability being that Examiner Answers are not issued within any set timeframe (I have waited anywhere from 2 months to a year). So, filing of the opening brief, waiting and responding to the Examiner answer, and filing a Reply brief will still span 12-18 months (on average).

Once the briefing process is concluded, jurisdiction passes to the PTAB. Only then can the applicant opt into the Fast-Track pilot for an additional $400 petition fee.

Absent acceleration, the current average time to PTAB decision (from the time of docketing) is 15 months (some technologies are marginally faster). So, best case scenario, the $400 acceleration fee may shave a 24 month process down to 18 months. But keep in mind pendency has been continually falling. The Board’s inventory is at a ten year low, and the potential for time saving via the Pilot is likely to degrade as the inventory shrinks further.

Thus, while the program may help those appellants where receiving an appeal result in 18 months as compared to 24 is meaningful, it is not a game-changing option for the vast majority of patent filers. This is especially the case when factoring in significant USPTO appeal fees (and 18-14 month delay) as compared to simply filing an RCE (Request for Continued Examination). It is not hard to see why the appeal inventory is falling in a time of economic uncertainty—especially for larger patent filers.

Scott A. McKeown is an author of the Patents Post Grant