Morgan Lewis partner Erik Hawes spoke with World IP Review for an article about a fast-track program recently launched by the US Patent and Trademark Office (USTPO). In the piece, he discussed the previous appeal process. “In recent years, the appeal process at the USPTO has been so slow that it was often not considered to be a viable option for applicants facing a final rejection,” said Erik. “This was particularly true in fields where technical innovation tends to move quickly, such as the oil and gas industry.”
“As a result, applicants facing a final rejection would often have no realistic choice but to file a request for continued examination, which simply leads to reopening prosecution with the same examiner who has already repeatedly rejected the claims of the pending application,”he added. “In situations where the examiner and applicant are not clearly communicating, for whatever reason, this has left applicants with no good option at the end of the day. There is now a legitimate choice in those situations so, for a small subset of applications, the expedited appeal process could truly be a game-changer.”
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