[Federal Register Volume 80, Number 178 (Tuesday, September 15, 2015)]
[Notices]
[Pages 55339-55341]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2015-23090]


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DEPARTMENT OF COMMERCE

 Patent and Trademark Office

[Docket No.: PTO-P-2015-0062]


Streamlined, Expedited Patent Appeal Pilot for Small Entities

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 Streamlined, Expedited Patent Appeal 
Pilot for Small Entities) under which a small or micro entity appellant 
may have an ex parte appeal to the Patent Trial and Appeal Board 
(Board) accorded special status if the appellant has only a single 
appeal pending before the Board and the appellant agrees to streamline 
the appeal. Specifically, the appeal must not involve any claim subject 
to a rejection for lack of written description, enablement, or best 
mode, or for indefiniteness, and the appellant must agree to the 
disposition of all claims subject to each ground of rejection as a 
single group and waive any request for an oral hearing. The 
Streamlined, Expedited Patent Appeal Pilot for Small Entities will 
allow small or micro entity appellants who streamline their appeals to 
have greater control over the priority with which their appeals are 
decided.

DATES: Effective Date: September 18, 2015.
    Duration: The Streamlined, Expedited Patent Appeal Pilot for Small 
Entities is being adopted on a temporary basis and

[[Page 55340]]

will run until two thousand (2,000) appeals have been accorded special 
status under the pilot, or until September 16, 2016, whichever occurs 
earlier. The USPTO may extend the Streamlined, Expedited Patent Appeal 
Pilot for Small Entities (with or without modification) on either a 
temporary or permanent basis, or may discontinue this pilot after 
September 16, 2016, depending upon the results.

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 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 section 708.02. The USPTO recently adopted 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. 
See Expedited Patent Appeal Pilot, 80 FR 34145 (June 15, 2015). The 
USPTO is now adopting, on a temporary basis, the Streamlined, Expedited 
Patent Appeal Pilot for Small Entities, under which a small or micro 
entity appellant may have an ex parte appeal to the Board accorded 
special status if the appellant has only a single appeal pending before 
the Board as of September 18, 2015 and the appellant agrees to 
streamline the appeal. The Streamlined, Expedited Patent Appeal Pilot 
for Small Entities will permit small or micro entity appellants to 
accelerate the Board decision on an appeal, possibly hastening the pace 
at which the invention is patented and brought to the marketplace, and 
thus spurring follow-on innovation, economic growth, and job creation. 
The streamlining of appeals under this pilot also will assist the Board 
to more efficiently reduce the overall inventory of pending appeals.
    The USPTO will accord special status to an appeal pending before 
the Board under the Streamlined, Expedited Patent Appeal Pilot for 
Small Entities 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 the appellant's only appeal pending 
before the Board as of September 18, 2015, and the appeal to be made 
special must have been docketed with the PTAB on or before September 
18, 2015.
    (2) The appellant must certify that the appellant has established 
status as a small entity or micro entity in the application underlying 
the appeal to be made special and also must certify that status as a 
small entity or micro entity is still appropriate. See 37 CFR 1.27 and 
1.28 concerning small entity status and see 37 CFR 1.29 concerning 
micro entity status.
    (3) The appellant must agree that, for each ground of rejection 
applying to two or more claims, the PTAB may select a single claim from 
the claims subject to each ground of rejection and decide the appeal to 
be made special with respect to every claim subject to that ground of 
rejection on the basis of the selected claim alone. See 37 CFR 
41.37(c)(1)(iv) concerning the treatment of claims subject to the same 
ground of rejection argued together as a group.
    (4) The appellant must certify that the appeal to be made special 
does not involve any claim subject to a rejection under 35 U.S.C. 112. 
If an appeal made special under the Streamlined, Expedited Patent 
Appeal Pilot for Small Entities is found to involve one or more claims 
subject to a rejection under 35 U.S.C. 112, the appeal normally will be 
removed from the pilot at the discretion of the Board.
    (5) The appellant must agree to waive any oral hearing in the 
appeal to be made special, and acknowledge that any oral hearing fees 
paid in connection with the appeal to be made special will not be 
refunded.
    (6) 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.
    The USPTO has created a form-fillable Portable Document Format 
(PDF) ``Petition to Make Special--the Streamlined, Expedited Patent 
Appeal Pilot for Small Entities'' (Form PTO/SB/441) for use in filing a 
certification and petition under 37 CFR 41.3 under the Streamlined, 
Expedited Patent Appeal Pilot for Small Entities. Form PTO/SB/441 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/441 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 Streamlined, Expedited Patent Appeal Pilot for 
Small Entities.
    MPEP section 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 Streamlined, Expedited 
Patent Appeal Pilot for Small Entities will be advanced out of turn for 
a decision on the appeal by the Board. The difference between the 
Streamlined, Expedited Patent Appeal Pilot for Small Entities and an 
application made special under 37 CFR 1.102 and MPEP section 708.02 is 
that an application in which an appeal is accorded special status for 
decision on an appeal to the Board under the Streamlined, Expedited 
Patent Appeal Pilot for Small Entities will not have a special status 
under CFR 1.102 and MPEP section 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 Streamlined, Expedited Patent Appeal Pilot for 
Small Entities is filed is as follows: (1) rendering a decision on the 
petition to make the appeal special no later than two months from the 
filing date of the petition; and (2) rendering a decision on the appeal 
no later than four months from the date a petition to make an appeal 
special under the Streamlined, Expedited Patent Appeal Pilot for Small 
Entities is granted. The current pendency of decided appeals in 
applications, for those appeals decided this fiscal year, ranges 
between an average of 24.9 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:

[[Page 55341]]



------------------------------------------------------------------------
                                                               Average
                                                             months from
                                                              docketing
                     Technology center                        notice to
                                                                board
                                                               decision
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1600.......................................................         32.5
1700.......................................................         24.9
2100.......................................................         31.6
2400.......................................................         31.2
2600.......................................................         31.2
2800.......................................................         27.0
2900.......................................................         26.2
3600.......................................................         31.7
3700.......................................................         30.1
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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 6.0 
months. The USPTO is not making the Streamlined, Expedited Patent 
Appeal Pilot for Small Entities applicable to appeals in ex parte 
reexaminations as these appeals already are handled with special 
dispatch, and the petition evaluation process only would delay the 
Board decision in an appeal in an ex parte reexamination.
    The Streamlined, Expedited Patent Appeal Pilot for Small Entities 
is being adopted on a temporary basis until two thousand (2,000) 
appeals have been accorded special status under the pilot, or until 
September 16, 2016, whichever occurs earlier. The USPTO may extend the 
Streamlined, Expedited Patent Appeal Pilot for Small Entities (with or 
without modification) on either a temporary or permanent basis, or may 
discontinue the pilot after September 16, 2016, depending upon the 
results. Additional information concerning the Streamlined, Expedited 
Patent Appeal Pilot for Small Entities, including statistical 
information 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: September 8, 2015.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2015-23090 Filed 9-14-15; 8:45 am]
 BILLING CODE 3510-16-P