Increasingly Faster Ex Parte Appeals Before the USPTO – New Fast Track Appeal Program

by Jerry F. Suva

Historically, patent practitioners regarded ex parte appeals of examiner decisions as very slow. These appeals, submitted to the Patent Trials and Appeal Board (PTAB) at the United States Patent and Trademark Office (USPTO), often required several years of waiting for a decision.

However, under Director Andrei Iancu, the decision time for an ex parte appeal decision has dropped dramatically. Once all briefs and answers have been submitted, the PTAB now issues a decision in an average time of 13-15 months. However, earlier this month the USPTO launched a new effort called the “Fast-Track Appeals Pilot Program” (FTAPP) which will make ex parte appeals even faster.

Nuts and Bolts of the FTAPP

The FTAPP is remarkably simple—pay an additional $400 fee in conjunction with an electronic petition, and the PTAB will issue a decision on your ex parte appeal in six months. The FTAPP parallels the “Track One” prosecution program, wherein one can also “cut in line” by paying an extra fee for expedited prosecution. The FTAPP is limited to 125 applications per quarter for the next year. As of July 24, twenty (20) applications have been accepted into the FTAPP, so plenty of opportunities still exist to take advantage of this expedited appeals process. Appellants who have previously filed a pending ex parte appeal can enter the FTAPP by simply paying the fee and filing the electronic petition. Oral hearings are available under the FTAPP but rescheduling such hearings is not flexible.

“6 Months”—But After the Reply Brief

The six-month window begins after filing of the Appeal Brief, the Examiner’s Answer, and the Reply Brief (if any). Obviously, the Appellant can reduce the time for the Appeal Brief or the Reply Brief by quickly filing these briefs. However, M.P.E.P. § 1207.02 states that the “examiner should furnish [the Examiner’s Answer] within 2 months” (emphasis added). The examiner is thus not required to provide the Examiner’s Answer within any given length of time. Anecdotally, examiners will wait as long as six months to provide their answer.

The six-month window for the decision under the FTAPP should thus be compared with the present average pendency for the decision. The average pendency varies over time and depends upon particular art units, but is roughly 15 months. Practitioners can view up-to-date USPTO pendency statistics here.

Thus, the FTAPP will save the average appellant about nine months.

Appeals are Now Even More Appealing

The USPTO promotes the FTAPP as suitable for emerging technologies or fast-to-market inventions. However, consider filing under the FTAPP by default for every ex parte appeal. The $400 fee is a small incremental cost when compared to the other USPTO fees and the necessary attorney fees for an appeal. Moreover, strongly consider filing an FTAPP petition for any already-filed ex parte appeal.

The FTAPP makes ex parte appeals an even more viable option when compared to other tactics for rejected claims, such as making an amendment and filing a Request for Continued Examination (RCE). Assuming efficiencies such as one month to draft an Appeal Brief, two months waiting for an Examiner’s Answer, and one month to draft a Reply Brief, the ex parte appeal process could be completed in ten months. A ten-month time span for an appeal compares favorably with the time for an RCE. Compared to an RCE, the ex parte appeal need not further limit the claims, receives substantive review by three PTAB judges, and limits potentially multiple subsequent office actions.

Potential patentees and patent practitioners should reconsider any traditional expectations in view of the FTAPP, and revisit ex parte appeals as a viable tactic in obtaining patent protection.