[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:
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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]
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