Monday, June 15, 2015

PTAB pilot program: abandon one appeal and get special priority for another appeal

Late breaking news from Carl Oppedahl's blog: a brand new pilot program at the PTAB allows an Applicant to get special priority for one application already on appeal, by withdrawing the appeal of another application. "Special priority" means a PTAB "goal" of appeal decision no more than 4 months after the petition for special status is granted.

See Carl's post here for full details, and here's a link to the Federal Register Notice. Be sure and read Carl's warning about careful handling of the application withdrawn from appeal.

The PTAB says this program runs until June 19, 2016, or until 2,000 appeals are made special, whichever comes first. The PTAB may choose to extend the program, depending on the results of the pilot. The "Pre Appeal Brief Conference" (PABC) program has been around since 2005 – and is still officially a "pilot pogram." Not sure if it makes any difference, but the PABC is administered by the PTO generally, where this new one appears to be administered directly by the PTAB. 


  1. Reeks of desperate move to reduce the backlog.

    What is the average cost of filing an appeal these days? With the PTO fees, you are talking easily $5K plus (if not much higher). That also doesn't consider the cost of filing another response (and RCE) in the application for which the appeal was withdrawn. That's an awfully expensive way to speed up disposition.

    Speaking of which, who wants to speed up disposition in this environment? Patents have such an extremely low value these days that it makes sense to park them in the PTAB backlog and hope that things change around in the next couple of years. If you win at the PTAB, you'll get all that time back. Really, who wants to assert a patent in today's environment.

    I'm sure there may be some in very special circumstances who would think this has some value. However, I very much expect that the June 19, 2015 deadline is hit before the 2,000 number (I'm guessing that they'll get less than 100 petitions).

    1. >who wants to speed up [ex parte appeal] disposition
      >in this environment?
      >who wants to assert a patent in today's environment.

      The Alice decision has certainly put a lot of computer-related apps/patents in jeopardy. And patents from all technologies are having trouble surviving prior art rejections during Post Grant Review.

      Is that what you're thinking about?

    2. Pretty much. I cannot think of a worse time in the past couple of decades to be a patent owner than right now. The value of patents have tanked. It is nearly impossible to enforce them if you are a small-time player. It has also become increasingly harder to obtain them.

      On the other hand, this is a great time to be an infringer of other people's intellectual property.

      computer-related apps/patents in jeopardy
      The recent SCOTUS decisions aren't just limited to those patents but also to biotech as well.