[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]]
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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]
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