Patent Trial and Appeal Board announces two-for-one sale

How did this two-for-one sale actually work out?  See my follow-on posting about this program.

US patent practitioners will recall a two-for-one sale offered by the USPTO’s Examining Corps back in 2011.  At that time the backlog of unexamined applications was so embarrassing that the USPTO came up with “Project Exchange”, aka the two-for-one sale.  That program offered an opportunity to get fast examination of a first case that was pending as of October of 2009, so long as the applicant expressly abandoned a second case that was likewise pending as of October of 2009.

Taking a page from that play book, the Patent Trial and Appeal Board has announced its own two-for-one sale, called the “Expedited Patent Appeal Pilot”.  If you have two ex parte appeals pending before the PTAB, you can abandon one of them and the PTAB will decide the other appeal fast.

To learn about this PTAB two-for-one program, click here to see the Federal Register notice.

Briefly, here’s how it works.  You have to have two ex parte appeals pending, meaning that the two applications need to be co-owned as of June 19, 2015 or need to have an inventor in common.  You withdraw your appeal in one case, and the USPTO makes your other case “special”.  The special status means that the appeal gets decided fast.

There are quite a few strings attached.  One string is that there must be no request for an oral hearing, or any request for an oral hearing must be withdrawn, for the appeal to be made special, and the appellant must agree not to request a refund of any oral hearing fees paid with respect to the appeal to be made special.

Another string is that as for the appeal that you are withdrawing, you must agree not to request a refund of any appeal fees, including oral hearing fees, paid with respect to the appeal to be withdrawn.

Still another string is that for the case that has been made “special”, the special status evaporates once the Board decides the appeal.  In other words the later prosecution before the Examining Corps proceeds in its normal non-special way.

Keep in mind the Board is making money hand over fist with this two-for-one program.  You will have paid for two appeals and the Board only has to do the work of deciding one appeal.

You might wonder how big a difference this two-for-one sale is likely to make.  The Board says it will try to decide the two-for-one request within two months of filing.  Once the request is granted, the Board says it will try to decide the appeal within four months.  So you have to wait six months to get the prize of a decided appeal.  Here are the Board’s published statistics for appeal backlogs:

Technology center backlog, months
1600 32.5
1700 24.7
2100 32.0
2400 32.0
2600 31.7
2800 26.9
2900 26.1
3600 31.7
3700 29.9

So for example suppose you have an appeal that has been pending so long that it will likely get decided in seven months.  For such an appeal, the use of this program would only move the decision up by one month, and the price you would pay is the withdrawn appeal in some other case.  Not only that, if you had already paid for an oral argument, you would have to give up the oral argument to get this one-month advancement of the decision.

What happens to the application in which you are withdrawing your appeal?  Keep in mind that an application having no allowed claims becomes abandoned upon withdrawal of an appeal, and that claims indicated as allowable but for their dependency from rejected claims are not considered allowed claims but are treated as rejected claims.  An RCE would preserve the pendency of the application in which you are withdrawing your appeal, but in such a case you would need to carefully time the filing of an RCE so that it is simultaneous with the two-for-one request.  File it one day too soon and the case would no longer be usable for two-for-one purposes.  File it one day too late and the case would already have gone abandoned because of the withdrawal aspect of the two-for-one request.

Who exactly is going to benefit from this two-for-one program?  Not the mom-and-pop filers.  Not the individual inventors.  Such a filer is extremely unlikely to have two pending appeals.  Inventors over 65 and inventors in poor health won’t benefit because their appeals are already “special”.  Filers who use the Patent Prosecution Highway won’t benefit because their appeals are already be “special”.

Yet another category of filer that will not benefit from this two-for-one program is the filer with exactly two appeals pending, at least one of which has been pending long enough that it will probably get decided within the next year or so anyway.

Yet another category of filer that will not benefit is the filer that requested oral argument and does not want to forgo the oral argument.

So who is left?  Mostly a high-volume filer that has large numbers of appeals pending, some of which were filed very recently, a filer having a fairly sophisticated way of classifying cases as gold, silver, and bronze, a filer that keeps constant track of the importance of each case so that sometimes a gold case gets reclassified as bronze during its pendency.  For a case that was bronze at the time of its Final Rejection, no appeal would have been filed.  So the case must have been gold at the time of the Final Rejection.  Not only that, but at the time the appeal brief (which costs a lot of money to prepare) the case must still have been gold.  Not only that, but if the Examiner decided to file an Examiner’s brief, then a big appeal fee would have been due, and would have been paid only if the case continued to be gold.   Yet now that the two-for-one program has been announced, if the case is going to have its appeal withdrawn, probably the case would have had to be reclassified (after the payment of the big appeal fee) as bronze.

How many filers fall into this category?  At most a few dozen, methinks.

The two-for-one program is being adopted on a temporary basis and will run until two thousand appeals have been accorded special status under the program, or until June 20, 2016, whichever occurs earlier.  I predict that by June 20, 2016 far fewer than 500 two-for-one requests will have been filed.

I am indebted to Rick Neifeld for tipping me off about this program, which won’t be officially announced until two days from now.

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