Expedited Appeals for Small Businesses

The Patent Trial and Appeal Board (PTAB) of the USPTO announced a new program focused on enabling small businesses to have their appeals expedited. Small or micro entity applicants can take advantage of the program by certifying that they have only a single appeal pending before the Board as of September 18, 2015. To utilize the program, the applicant must file a petition to make special under 37 C.F.R. 41.3 to the Chief Administrative Patent Judge.  

Note that there are particular timing requirements for utilizing this program. Specifically, the applicant must certify that the relevant case is the applicant’s only appeal pending before the Board as of September 18, 2015 and that a docketing notice was issued for the appeal on or before September 18, 2015. 

Substantively, there is a potential "gotcha" where the applicant must also 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. The Board often strategically selects claims from among a group that are the easiest to affirm. That is why most savvy attorneys handling appeals always argue claims separately to avoid giving the Board an easy way out. Thus, before utilizing this program, the applicant should study this issue carefully.  

Finally, the applicant must certify that the appeal to be made special does not involve any claim subject to a rejection under 35 U.S.C. § 112, and 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. 

Thus, this program can be useful in particular circumstances where speed to a decision outweighs some of the sacrifices noted above.