July 21, 2015
The U.S. Patent and Trademark Office (USPTO) continues to exhibit sensitivity to overly long pendency of patent applications. One contributing factor to pendency for some applications is the current average of 30 months that an applicant must wait to receive a decision when appealing from an examiner’s final rejection. The USPTO has previously publicly acknowledged an unsatisfactory number of pending appeals (in excess of 20,000 at any given time during the past few years) and has undertaken some actions (such as bringing more judges online) to attempt to reduce that backlog.
Last month the USPTO announced an Expedited Patent Appeal Pilot Program to offer a way for an applicant to seek to reduce that waiting time to less than six months. Pursuant to this program, an applicant having at least two currently pending appeals can gain expedited treatment of one appeal by withdrawing the other appeal. To participate in the pilot, an applicant must certify that both appeals had a docketing notice mailed on or before June 19, 2015, and the applicant must forgo any previously requested oral hearing and surrender any corresponding fees that were paid.
This program explicitly permits the applicant to resubmit the withdrawn application pursuant to a Request for Continuing Application to avoid abandonment of the withdrawn application, and there do not appear to be any prohibitions against taking that application back on appeal. Petitions to participate in this program will be accepted until June 20, 2016, or until 2,000 such petitions are granted, whichever occurs first.
If you have any questions regarding this pilot program, please contact Fitch Even partner Steven G. Parmelee, the author of this alert.
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