By Dr. Rao Vepachedu, JD, PhD, LLM1
An appellant may participate in a PTAB pilot program called the Expedited Patent Appeal Pilot (EPAP)2 for an expedited review of a pending ex parte appeal in exchange for another pending ex parte appeal, by filing a petition for participation in the pilot program. The EPAP is effective from June 19, 2015 and available until June 20, 2016 or until the PTAB grants 2,000 petitions, whichever occurs first.
To accord the special status in one pending appeal through the EPAP, the USPTO is providing a temporary basis by requiring the appellant withdraw the appeal in another application in which an ex parte appeal is also pending before the Board, where both applications are either owned by the same party as of June 19, 2015, or name at least one inventor in common.
An appellant must file petition to make special under 37 C.F.R. 41.3 to the Chief Administrative Patent Judge. A form (Form PTO/SB/4383) is available for filing this petition through EFS-Web and the USPTO will accord special status to an appeal pending before the Board under the following conditions:
1) Appeal to be made special: A certification and petition under 37 CFR 41.3 in the application involved in the ex parte appeal for which special status is sought (“appeal to be made special”) for which a docketing notice was mailed no later than June 19, 2015, by
- identifying that application and appeal by application and appeal number,
- making sure that there is no request for an oral hearing (by withdrawing the request), and agreeing to not request a refund of any oral hearing fees paid with respect to the appeal to be made special.
2) Appeal to be withdrawn: The petition under 37 CFR 41.3 must include a request to withdraw the appeal in another application or ex parte reexamination for which a docketing notice was mailed no later than June 19, 2015 and before it has been taken up for decision (“appeal to be withdrawn”), identifying that application or ex parte reexamination and appeal by application or reexamination control number and appeal number, and agree not to request a refund of any appeal fees, including oral hearing fees, paid with respect to the appeal to be withdrawn.
(1) Dr. Rao Vepachedu is a Managing Director at Cardinal Risk Management and registered patent attorney with extensive experience in the management of intellectual property and extensive experience in research and teaching. He currently works for Cardinal Intellectual Property (CIP), Cardinal Risk Management (CRM), and Cardinal Law Group (CLG). In addition, he is the president of Vepachedu Educational Foundation Inc. (www.vepachedu.org), a 501(c) (3) educational foundation. For more information visit: www.linkedin.com/in/vepachedu; http://www.avvo.com/attorneys/60201-il-sreenivasarao-vepachedu-764535.html, and http://www.crm-ip.com/vepachedu.html. Contact: email@example.com or firstname.lastname@example.org.
(2) EPAP Program: https://www.federalregister.gov/articles/2015/06/15/2015-14754/expedited-patent-appeal-pilot http://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/expedited-patent-appeal-pilot
(3) Form PTO/SB/438: http://www.uspto.gov/sites/default/files/documents/sb0438%20Rev%202015-05-01.pdf