Fast appeals for Small Entities

Readers will recall that in June 2015, the Patent Trial and Appeal Board announced its two-for-one sale.  Any filer that had two ex parte appeals pending as of June 19, 2015 could get one of the appeals decided right away by dropping the other appeal.  When the PTAB announced this program, I blogged about it.  I noted that this program was likely to be of interest only to sophisticated, high-volume corporate filers, since only such filers would (a) have two appeals pending and (b) be in a position to make a decision to drop an appeal in a case that previously seemed important enough to appeal.  I noted that few if any small or micro entities would be able to use this program because they would not have two appeals pending (one of which would have to be dropped to qualify for the two-for-one program).  I predicted that very few filers (large or small) would actually choose to use this two-for-one program, and my prediction turned out to be correct.

Now the PTAB has announced a second program for getting ex parte appeals decided fast.  This second program, fetchingly named S-EPAP for Small Entities, is described in a Federal Register notice dated September 15, 2015 and on an FAQ page.  This program permits a small entity or micro entity to get an ex parte appeal decided fast under certain conditions.

It is interesting to note USPTO’s explanation for setting up this second fast-appeals program:

Members of the public noted that small entities having only one appeal pending before the PTAB would not be able to take advantage of the EPAP program to secure expedited review of an ex parte appeal.

It seems I was one of those “members of the public”.

So how does this second, new fast-appeals program work?

Much like the PTAB’s two-for-one sale, this S-EPAP for Small Entities program has many strings attached.

First, to be eligible for S-EPAP for Small Entities, the filer has to be a small or micro entity.  Normally if you are a small entity at the time you assert small-entity status (for example at the time of filing a patent application), you get all of the benefits of being small until the time comes to pay the Issue Fee.  Only then do you need to re-evaluate whether you still qualify as “small”.  But to use S-EPAP for Small Entities you need to re-evaluate your “small” status and must certify your continued “small” status at the time of requesting a fast appeal.

Micro entity filers are accustomed to having to re-evaluate their “micro” status every time they pay another micro fee to the USPTO. The S-EPAP for Small Entities program states that the file would need to re-evaluate the filer’s “micro” status and would need to certify the filer’s continued “micro” status at the time of requesting a fast appeal. This is a bit of an odd requirement given that the micro filer that had ceased to be “micro” but that still qualified as “small” would be able nonetheless to use the “small” status to qualify for S-EPAP for Small Entities.

To use S-EPAP for Small Entities your ex parte appeal needs to have been docketed with the PTAB prior to September 18, 2015.  In other words, you can’t learn about this program today and file a new appeal and get it decided fast under this program.  You have to have already filed your appeal well before September 18, 2015 so that it got docketed to the PTAB by that date.

To use S-EPAP for Small Entities your ex parte appeal that was docketed prior to September 18, 2015 is required to be your only ex parte appeal pending as of that date.  In other words if you had two or more appeals pending as of that date, you cannot use  S-EPAP for Small Entities.

To use S-EPAP for Small Entities your ex parte appeal is required to not have any 112 issues on appeal.  You have to certify that this is the case.

To use S-EPAP for Small Entities you have to agree in advance that all claims stand and fall together, and, importantly, you have to agree in advance to let the PTAB pick the one claim that will be considered for the appeal.  The PTAB gets to pick the one claim that will be considered for the appeal, and whichever claim the PTAB picks, that’s it.  All of the other appealed claims will stand or fall with this one claim.

If you requested oral hearing, then to use S-EPAP for Small Entities you have to withdraw your request for oral hearing.  You do not get a refund of the fee that you paid for the oral hearing.

If you were not represented by counsel, to make use of S-EPAP for Small Entities you will have to hire counsel.  (The request to use S-EPAP for Small Entities must be signed by a registered practitioner.)

The PTAB has set a first goal of deciding any request to participate in S-EPAP for Small Entities within two months, and has set a second goal of deciding the actual appeal within four months of the grant of the request.

The PTAB has capped the participation in S-EPAP for Small Entities to 2000 cases between now and September of 2016.

How should you decide whether to use S-EPAP for Small Entities?

One important factor is how long it would have taken the PTAB to get around to deciding your appeal even without this program.  For example your case might already be “special” because of PPH or age of 65 or older, or health of an inventor, in which case your appeal will get decided fast anyway.  Or your appeal might already have been pending for a long enough time that a decision is expected soon anyway.  These days it is taking around 2½ years for the PTAB to decide an ex parte appeal, so if your appeal has been pending for two years already, this program might not make the appeal decision come any faster.

Other factors to consider — if you paid for an oral hearing, do you really want to give it up?  And if in your appeal brief you argued the patentability of individual claims, do you really want to give that up (with all claims standing and falling together)?

Some micro and small entity filers are actually high volume filers (for example some large nonprofits) and so might have two or more appeals pending already, and so would be ineligible under this program.

It will be interesting to see how many requests get filed under the S-EPAP for Small Entities program.  Consider that some fraction of micro and small entity filers are pro se (not represented by counsel).  Such filers are unlikely even to learn of the existence of the S-EPAP for Small Entities program.  Of the small and micro entity filers that learn of this program, some will discover that as of the present date they no longer qualify as small, and so will not be eligible for this program.  Some filers that would otherwise be eligible, but are not represented by counsel, will choose not to hire counsel (or will not be able to afford to hire counsel) and so will not be able to file the request.  Some filers will have an appeal with at least one 112 issue, and so will not be eligible.

As I mentioned above, the S-EPAP for Small Entities program is set to end after a year (September 2016) or when two thousand requests get filed, whichever happens first.  Common sense tells us, however, that the number of requests will likely diminish with time.  Consider that the number of eligible filers was capped as of September 18, 2015.  Some filers will lose eligibility during the coming year due to losing “small entity” status.  Each passing month will reduce how long the filer would be expected to have to wait for an appeal to get decided even without this program.

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