For some years, I have complained that the lack of a timely appeal process to the Board (“PTAB”) effectively removes the appeal process as a prosecution tool. The average pendency of an appeal to the Board from a rejection arising in Group 1600 is presently 32.5 months. That is a long time for a small entity like a University or a start-up to go without a patent. I personally do not feel that the pre-appeal conference helps much, since the brief is reviewed by the Examiner and two other PTO personnel, with no opportunity for the attorney or the applicant(s) to participate. As a result, the backlog at the USPTO is, as Donald Trump would say, “HUGE.”
The pilot program announced September 15th, 80 Fed. Reb. 55341, permits small entities such as universities, small start-ups or individual inventors to petition to have an appeal to the Board automatically designated as “Special” if a number of requirements are met, beginning with the requirement that the appellant have only a single appeal pending, and that it must be docketed prior to September 19th. Enumerated requirements 1-2 and 6 are formal. Requirement 3 permits the PTAB to evaluate the patentability of a single claim that they select, from any group of claims under the same ground(s) of rejection. Presumably, the Board would pick the broadest claim, and so would not have to deal with narrower claims in the same group. Requirement 4 is that none of the claims on appeal can be under a s. 112 rejection. Nautilus v. Biosig aside, this saves time since, historically s. 112 rejections are more likely to be reversed by the Board than 102/103 rejections.
I was sorry to see Requirement 5, since it requires appellant(s) to waive the oral hearing. This is the only opportunity for the attorney to participate in the process directly – to answer questions and to elaborate on the novelty/unobviousness of the rejection(s). My mentor made sure that we always requested and presented oral argument, if only to demonstrate that we were “serious” about the appeal. If the “Streamlined, Expedited Patent Appeal Pilot for Small Entities” is no more than a strategy to reduce the backlog of pending appeals by rubber stamping rejections, I think that will soon be apparent. In any case, we have some hard decisions to make regarding pending appeals. The program is limited to 2000 appeals and expires on September 16, 2016.