The Fast-Track Appeals Pilot Program: What It Is and Who It’s For
Due to the success of Track One, the USPTO has created the Fast-Track Appeals Pilot Program to carry the benefits of prioritized examination through to appeals.The new program aims to review eligible appeals and issue a decision within six months from the date a petition is granted. The average pendency for a standard appeal is currently about 14 months — down from a high of 30 months in 2015. Given its low petition fee and promise to cut disposition time by more than half, the Program is likely to be popular among patent applicants — despite one key limitation.
What is the Fast-Track Appeals Pilot Program?
The Program is essentially an extension of the Track One prioritized examination program, which allows applicants to obtain a final disposition on a patent application within 12 months of the application’s filing date. The Track One program is both popular and successful, but prioritized examination under that program does not carry through to appeals from a final rejection — meaning that applicants could lose the benefit of prioritized examination should they decide to appeal. Due to the success of Track One, the USPTO created the new program to carry the benefits of prioritized examination through to appeals.
The eligibility requirements for the Program are fairly straightforward. To qualify for fast-track status, the following four conditions must be met:
- Application type: The application must be an original utility, design, or plant nonprovisional application. The Program is not available for applications or proceedings that are already treated as special during appeal, such as reissue applications, reexamination proceedings, appeals made special due to the age or health of an applicant, or appeals subject to any other pilot program that advances an appeal out of turn.
- Status of appeal: The appeal for fast-track status must be an ex parte appeal for which a notice of appeal has been filed and a PTAB docketing notice has been issued by the USPTO.
- Petition: The appellant must file a petition under 37 CFR 41.3 via the USPTO’s electronic filing system identifying the application and appeal by application number and appeal number, respectively, for which fast-track review is sought.
- Payment of fee: The appellant must pay a $420 fee under 37 CFR 41.20(a) with the petition.
Even with the overall goal of rendering a decision within six months, there is no limit on the number of claims a petitioner may appeal. Fast-track appeals under the Program are also handled according to “normal” PTAB procedures, which allow petitioners to request an oral hearing. However, the USPTO retains the discretion to modify or terminate the Program if it determines that fast-track appeals are adversely impacting the pendency of standard appeals.
The key limitation is the relatively small number of petitions the Program will grant, which is limited to 125 per quarter. In some cases, the PTAB may grant a few petitions over the 125-petition limit. However, should a significant number of petitions exceed the limit in a given quarter, those petitions will be held in abeyance and decided, in order of receipt, in a subsequent quarter.
The Program will remain active for a one-year probationary period.
Who should use the Fast-Track Appeals Pilot Program?
Appeals can be difficult for many applicants due to the time and the expense they require. The Program helps alleviate one of those pain points — the time it takes to reach disposition — but not the other. The Program will thus be ideal for applicants whose primary concern is speed, such as those who need a patent to secure investment funding. It may also be ideal for applicants who are stuck with examiners with low allowance rates. For applicants whose primary concern with appeals is their cost, the program is less ideal. In addition to the $420 petition fee, appellants must also pay the standard fee for a notice of appeal ($840) and the fee to forward their appeal to the PTAB ($2,360). The Program’s 125-petition per quarter limit could also diminish its effectiveness, as appellants whose petitions are held in abeyance for multiple quarters lose some of the benefits of an expedited review.
Ultimately, the Program is ideal for applicants whose patent needs are time-sensitive and whose petitions are accepted for review in the same quarter in which they file.
Evaluating and looking for opportunities within these special programs is integral to conducting a strategic and cost-effective patent prosecution. Juristat's patent analytics include a document code filter to help patent practitioners easily isolate these applications and better understand these USPTO programs.
Is there another USPTO program you would like to explore? We’d be happy to take a look with you.