[Federal Register Volume 80, Number 114 (Monday, June 15, 2015)]
[Notices]
[Pages 34145-34147]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2015-14754]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

[Docket No.: PTO-P-2015-0030]


Expedited Patent Appeal Pilot

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice.

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SUMMARY: The United States Patent and Trademark Office (USPTO) has a 
procedure under which an application will be advanced out of turn 
(accorded special status) for examination if the applicant files a 
petition to make special with the appropriate showing. The USPTO is 
providing a temporary basis (the Expedited Patent Appeal Pilot) under 
which an appellant may have an ex parte appeal to the Patent Trial and 
Appeal Board (Board) accorded special status if the appellant withdraws 
the appeal in another application in which an ex parte appeal is also 
pending before the Board. The Expedited Patent Appeal Pilot will allow 
appellants having multiple ex parte appeals currently pending before 
the Board to have greater control over the priority with which their 
appeals are decided and reduce the backlog of appeals pending before 
the Board.

DATES: 
    Effective Date: June 19, 2015.
    Duration: The Expedited Patent Appeal Pilot is being adopted on a 
temporary basis and will run until two thousand (2,000) appeals have 
been accorded special status under the Expedited Patent Appeal Pilot, 
or until June 20, 2016, whichever occurs earlier. The USPTO may extend 
the Expedited Patent Appeal Pilot (with or without modification) on 
either a temporary or permanent basis, or may discontinue the Expedited 
Patent Appeal Pilot after June 20, 2016, depending upon the results of 
the Expedited Patent Appeal Pilot.

FOR FURTHER INFORMATION CONTACT: Steven Bartlett, Patent Trial and 
Appeal Board, by telephone at 571-272-9797, or by electronic mail 
message at [email protected].

SUPPLEMENTARY INFORMATION: Appeals to the Board are normally taken up 
for decision by the Board in the order in which they are docketed. The 
USPTO

[[Page 34146]]

has a preexisting procedure under which an application will be advanced 
out of turn (accorded special status) if the applicant files a petition 
to make special with the appropriate showing. See 37 CFR 1.102 and MPEP 
Sec.  708.02. The USPTO is adopting, on a temporary basis, the 
Expedited Patent Appeal Pilot, under which an appellant may have an ex 
parte appeal to the Board in an application accorded special status if 
the appellant withdraws the appeal in another application or ex parte 
reexamination with an ex parte appeal also pending before the Board. 
The Expedited Patent Appeal Pilot will permit an appellant having 
multiple appeals pending before the Board to accelerate the Board 
decision on an appeal involving an invention of greater importance to 
the appellant, possibly hastening the pace at which the invention is 
patented and products or services embodying the patent are brought to 
the marketplace, and thus spurring follow-on innovation, economic 
growth, and job creation, by foregoing another pending appeal in which 
the underlying invention is no longer a business pursuit or priority to 
the appellant.
    The USPTO will accord special status to an appeal pending before 
the Board under the following conditions:
    (1) A certification and petition under 37 CFR 41.3 must be filed by 
the USPTO's electronic filing system (EFS-Web) in the application 
involved in the ex parte appeal for which special status is sought 
(``appeal to be made special''), identifying that application and 
appeal by application and appeal number, respectively. In addition, the 
appeal to be made special must be an appeal for which a docketing 
notice was mailed no later than June 19, 2015. Moreover, there must be 
no request for an oral hearing, or any request for an oral hearing must 
be withdrawn, for the appeal to be made special, and the appellant must 
agree not to request a refund of any oral hearing fees paid with 
respect to the appeal to be made special.
    (2) The petition under 37 CFR 41.3 must include a request to 
withdraw the appeal in another application or ex parte reexamination 
for which a docketing notice was mailed no later than June 19, 2015 
(``appeal to be withdrawn''), identifying that application or ex parte 
reexamination and appeal by application or reexamination control number 
and appeal number, respectively. The petition under 37 CFR 41.3 must be 
filed before the appeal to be withdrawn has been taken up for decision. 
The appellant also must agree not to request a refund of any appeal 
fees, including oral hearing fees, paid with respect to the appeal to 
be withdrawn.
    (3) The application involved in the appeal to be made special and 
the application or patent under reexamination involved in the appeal to 
be withdrawn must be either owned by the same party as of June 19, 
2015, or name at least one inventor in common.
    (4) The petition under 37 CFR 41.3 must be signed by a registered 
practitioner who has a power of attorney under 37 CFR 1.32, or has 
authority to act under 37 CFR 1.34, for the application involved in the 
appeal to be made special and for the application or patent under 
reexamination involved in the appeal to be withdrawn.
    The USPTO has created a form-fillable Portable Document Format 
(PDF) ``Petition to Make Special--Expedited Patent Appeal Pilot'' (Form 
PTO/SB/438) for use in filing a certification and petition under 37 CFR 
41.3 under the Expedited Patent Appeal Pilot. Form PTO/SB/438 is 
available on the USPTO's Internet Web site on the micro site for USPTO 
patent-related forms (http://www.uspto.gov/patent/patents-forms). Form 
PTO/SB/438 does not collect ``information'' within the meaning of the 
Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). See 5 CFR 
1320.3(h). Therefore, this notice does not involve information 
collection requirements which are subject to review by OMB.
    No petition fee is required. The $400.00 fee for a petition under 
37 CFR 41.3 is hereby sua sponte waived for any petition to make an 
appeal special under the Expedited Patent Appeal Pilot.
    The withdrawal of an appeal in an application or ex parte 
reexamination may not form the basis for more than one petition to make 
special under the Expedited Patent Appeal Pilot, including a petition 
to make special for a subsequent appeal in the application for which a 
petition to make an appeal special was granted, or any continuing 
application of the application for which a petition to make an appeal 
special was granted.
    MPEP Sec.  1203 provides that an application made special and 
advanced out of turn for examination will continue to be special 
throughout its entire course of prosecution in the Office, including 
appeal, if any, to the Board. An appeal that is accorded special status 
for decision on an appeal to the Board under the Expedited Patent 
Appeal Pilot will be advanced similarly out of turn for a decision on 
the appeal by the Board. The difference between the Expedited Patent 
Appeal Pilot and an application made special under 37 CFR 1.102 and 
MPEP Sec.  708.02 is that an application in which an appeal is accorded 
special status for decision on an appeal to the Board under the 
Expedited Patent Appeal Pilot will not have a special status under CFR 
1.102 and MPEP Sec.  708.02 after the decision on the appeal.
    The goal for handling an application in which a petition to make an 
appeal special under the Expedited Patent Appeal Pilot is filed is as 
follows: (1) Rendering a decision on the petition to make the appeal 
special no later than two (2) months from the filing date of the 
petition; and (2) rendering a decision on the appeal no later than four 
(4) months from the date a petition to make an appeal special under the 
Expedited Patent Appeal Pilot is granted. The current pendency of 
decided appeals in applications, for those appeals decided this fiscal 
year, ranges between an average of 24.7 months for appeals from 
applications assigned to Technology Center 1700 and an average of 32.5 
months for appeals from applications assigned to Technology Center 
1600, and is shown for each Technology Center in the following table:

------------------------------------------------------------------------
                                                         Average months
                                                         from docketing
                  Technology  Center                    notice to  board
                                                            decision
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1600.................................................               32.5
1700.................................................               24.7
2100.................................................               32.0
2400.................................................               32.0
2600.................................................               31.7
2800.................................................               26.9
2900.................................................               26.1
3600.................................................               31.7
3700.................................................               29.9
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    Ex parte reexamination proceedings, including any appeal to the 
Board, are conducted with special dispatch within the USPTO. See 35 
U.S.C. 305. The current average pendency of appeals in ex parte 
reexaminations, for those appeals decided this fiscal year, is 5.7 
months. The USPTO is not making the Expedited Patent Appeal Pilot 
applicable to appeals in ex parte reexaminations as these appeals 
already are handled with special dispatch, and the petition evaluation 
process would only delay the Board decision in an appeal in an ex parte 
reexamination.
    The process for handling an application in which an appeal is 
withdrawn is set forth in MPEP Sec.  1215. Appellants should 
specifically note that an application having no allowed claims becomes 
abandoned upon withdrawal of an appeal, and that claims indicated as

[[Page 34147]]

allowable but for their dependency from rejected claims are not 
considered allowed claims but are treated as rejected claims. See MPEP 
Sec.  1215.01.
    The filing of a request for continued examination under 37 CFR 
1.114 in an application on appeal to the Board is treated as a request 
to withdraw the appeal and to reopen prosecution of the application 
before the examiner. See 37 CFR 1.114(d). A request for continued 
examination may be filed with a petition under 37 CFR 41.3, and the 
withdrawal of an appeal in that application resulting from the filing 
of such a request for continued examination may form the basis for a 
petition to make special based upon the Expedited Patent Appeal Pilot. 
The withdrawal of an appeal resulting from the filing of a request for 
continued examination prior to the filing of a petition under 37 CFR 
41.3, however, may not form the basis for a petition to make special 
based upon the Expedited Patent Appeal Pilot.
    As discussed previously, an application having no allowed claims 
becomes abandoned upon withdrawal of an appeal. Any request for 
continued examination, however, must be filed prior to the abandonment 
of the application. See 37 CFR 1.114(a)(2). Thus, an appellant wishing 
to file a request for continued examination in an application in which 
there is an appeal to be withdrawn under the Expedited Patent Appeal 
Pilot must, if there are no allowed claims, file the request for 
continued examination with the petition under 37 CFR 41.3 to ensure 
that the request for continued examination is filed prior to the 
abandonment of the application that will result from the dismissal of 
the appeal.
    A request for continued examination must include a submission. See 
37 CFR 1.114(a) and (c). An appeal brief, or a reply brief, or related 
papers, are not considered a submission under 37 CFR 1.114. See 37 CFR 
1.114(c). The submission, however, may consist of the arguments in a 
previously filed appeal brief or reply brief, or may simply consist of 
a statement that incorporates by reference the arguments in a 
previously filed appeal brief or reply brief. See MPEP Sec.  706.07(h).
    The Expedited Patent Appeal Pilot is being adopted on a temporary 
basis until two thousand (2,000) appeals have been accorded special 
status under the Expedited Patent Appeal Pilot, or until June 20, 2016, 
whichever occurs earlier. The USPTO may extend the Expedited Patent 
Appeal Pilot (with or without modification) on either a temporary or 
permanent basis, or may discontinue the Expedited Patent Appeal Pilot 
after June 20, 2016, depending upon the results of the Expedited Patent 
Appeal Pilot. Additional information concerning the Expedited Patent 
Appeal Pilot, including statistical information concerning the 
Expedited Patent Appeal Pilot and pendency of appeals before the Board, 
can found on the USPTO Internet Web site at: https://www-cms.uspto.gov/patents-application-process/patent-trial-and-appeal-board/expedited-patent-appeal-pilot.

    Dated: June 10, 2015.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2015-14754 Filed 6-12-15; 8:45 am]
 BILLING CODE 3510-16-P