Expedited Patent Appeals

For a patent applicant, the appeals process is slow – adding years to the patent prosecution process.  While the USPTO is slowly addressing its unduly large backlog of appeals, it is also proposing a new Track-1 for ex parte appeals in the form of an Expedited Patent Appeals pilot program.

Although no petition fee will be required, the cost of the program may be too great. Namely, applicants must (1) Withdraw a pending ex parte appeal of another application (without refund); and (2) Agree to no oral hearing.  The withdrawal process can be accomplished with the filing of a request for continued examination (RCE).

The goal will be to reach a decision on the merits within six months of the petition filing.

[Read the Fed.Reg. Notice]

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I should note that the PTAB continues to hire new judges, and is currently conducting a search for a new Chief Judge. [LINK]


21 thoughts on “Expedited Patent Appeals

  1. 7

    PTO can’t examine competently, or handle the load of appeals generated by that incompetence, so it says, “If you reward our incompetence by withdrawing one appeal, we’ll look at another appeal of your real soon!”

    That’s nice work if you can get it, but what would happen if I tried that with my clients? “Well, I haven’t had time to draft either of the applications you paid me to draft, but if you let me keep the full retainer, I’ll do one of them for you at the rate I told you it would cost for one application.”

    Too bad the OED can’t investigate PTAB.

    1. 7.1

      Imagine what the appeals backlog would be if the PTO didn’t re-open prosecution in 75% of the cases in which a pre-appeal or appeal brief is filed.

    2. 7.2

      You should hook up with Scott below, whose rather insightful post matches the tenor of your post.

      After all, what me worry? As a scriviner, I can always react (later), thereby earning the scorn and denigration of the Court.

  2. 6

    Can I be reading this correctly?

    1. Under condition (4), pro se appellants who are not registered with the PTO need not apply.

    2. A lot of pro se appellants, appellants with only one pending appeal, and appellants with multiple pending appeals of valuable subject matter who were s*rewed on examination and who refuse to throw away a valid, costly examination and appeal are, basically, going to be moved back 2000 notches in the queue.

    3. This is just a petition and, presumably, can be denied. IOW it allows Lee’s leprechauns to pick and choose who gets to play. They will obviously pick the appeals that: a) are easy enough that they can all be decided in 4 months; b) are already far up the queue, and c) that have appeals to be terminated that are complex and closer to the rear of the queue. This would maximize the benefit to the PTO, minimize the benefit for the petitioners as a whole, and minimize back-shifting of those who don’t participate.

    This is what passes for equal treatment under the law in Lee’s view? From the perspective of someone who has been waiting 36+ months already, it smells like a hippo’s 2-holer outhouse.

  3. 4

    Based on my reading of the rules, I think the target for deciding on the petition is two months and the target for deciding the appeal is four months after the petition is granted (six months total after filing the petition).

  4. 3

    How about implementing two-judge panels by default instead of three-judge panels? A third judge could be brought in if the two judges cannot agree. Only ~0.3% (~30 in FY2014, ~50 in FY2013, and ~40 in FY2012) of PTAB decisions involving ex parte appeals include a dissenting opinion.

    1. 3.1

      I think you read too much into the agreement/disagreement stats.

      Meaning behind those stats is (largely) lost if the court (here, critically an Article I court), if the court is not objectively dispassionate. As has been noted previously, this particular federal agency Article I court is simply too close to its executive oversight and control, and lacks even the appearance of independent objectivity.

      We do have a serious problem of muddled lines of authority (inherently a problem with the so-called “Fourth Branch” of the government, and as Ned can attest, exacerberated when the (in truth) Executive branch wields the power of the judicial branch – with no opportunity of checks and balances.

      (There is a Federalist paper on this topic)

  5. 2

    A better idea: Have the applicant elect to have the appeal decided by a single PTAB judge.

    1. 2.2

      I have it on reasonably good authority that about 90% of the decisions would remain substantially the same, so I think I’d take expedited process since the “getting it right” rate isn’t all that phenomenal in my biased opinion anyways. And they have chem and bio judges doing electrical appeals since that’s where the cases are, so I’m not all that confident unfortunately.

    2. 2.3

      This is a good idea, but I don’t actually think it would save much time for the Board because in 95% of cases these days two of the judges spend very little time on the case.

      1. 2.3.1

        It would increase Board production. Each APJ has to primarily author 60 decisions, and be a panel member (i.e. be one of the other two APJP’s) on 120 decisions. So if you have three APJ’s, A, B, and C, they’ll dispose of 180 appeals a year (A will write 60 and panel on 120, and B will write 60 and panel on 120, and C will write 60 and panel on 120). If instead A, B, and C each wrote 90 decisions, and didn’t panel on any, the three APJ’s would dispose of 270 appeals in a year. That’s a 50% increase in the number of cases decided by A, B, and C.


          You’re probably correct. Not sure what incentive, if any, an APJ has to delve deeply into a case where they are just one of the panel members.

  6. 1

    Very easy to game:
    File crappy patent. Get rejected. File ex-parte appeal. Withdraw to get expedited for the patent you care about.
    Total cost is just filing fees for the crappy patent + appeals fees for same.

    1. 1.1

      By the time you “File crappy patent. Get rejected. File ex-parte appeal. Withdraw to get expedited for the patent you care about.” your original appeal will be at the Board…

    2. 1.2

      You don’t need to file the frivolous application. If you have a busy docket, just file an appeal in another case and then withdraw it and file the RCE you would have filed anyway. The only cost is the cost of the second appeal and the delay in filing your RCE. The withdrawal requirement is a typically incompetent USPTO attempt to manipulate applicants.

      1. 1.2.1

        It’s unlikely our clients would go for this. That’s $2,800 just in filing fees that are going to be wasted, not to mention attorney fees for an Appeal Brief and Reply Brief. Unless a client has an incredibly important case they’d like to have resolved in a short period, this seems like too much money.

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