2674 Appeal in Inter Partes Reexamination
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(a) PATENT OWNER.— The patent owner involved in an inter partes reexamination proceeding under this chapter—
(1) may appeal under the provisions of section 134 and may appeal under the provisions of sections 141 through 144, with respect to any decision adverse to the patentability of any original or proposed amended or new claim of the patent; and
(2) may be a party to any appeal taken by a third-party requester under subsection (b).
(b) THIRD-PARTY REQUESTER.— A third-party requester—
(1) may appeal under the provisions of section 134, and may appeal under the provisions of sections 141 through 144, with respect to any final decision favorable to the patentability of any original or proposed amended or new claim of the patent; and
(2) may, subject to subsection (c), be a party to any appeal taken by the patent owner under the provisions of section 134 or sections 141 through 144.
(c) CIVIL ACTION.— A third-party requester whose request for an inter partes reexamination results in an order under section 313 is estopped from asserting at a later time, in any civil action arising in whole or in part under section 1338 of title 28, the invalidity of any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings. This subsection does not prevent the assertion of invalidity based on newly discovered prior art unavailable to the third-party requester and the Patent and Trademark Office at the time of the inter partes reexamination proceedings.
"" Appeals to the Patent Trial and Appeal Board under 35 U.S.C. 134(c) are conducted according to part 41 of this title.
(a)
(1) Upon the issuance of a Right of Appeal Notice under § 1.953 of this title, the owner may appeal to the Board with respect to the final rejection of any claim of the patent by filing a notice of appeal within the time provided in the Right of Appeal Notice and paying the fee set forth in § 41.20(b)(1).
(2) Upon the issuance of a Right of Appeal Notice under § 1.953 of this title, the requester may appeal to the Board with respect to any final decision favorable to the patentability, including any final determination not to make a proposed rejection, of any original, proposed amended, or new claim of the patent by filing a notice of appeal within the time provided in the Right of Appeal Notice and paying the fee set forth in § 41.20(b)(1).
(b)
(1) Within fourteen days of service of a requester’s notice of appeal under paragraph (a)(2) of this section and upon payment of the fee set forth in § 41.20(b)(1), an owner who has not filed a notice of appeal may file a notice of cross appeal with respect to the final rejection of any claim of the patent.
(2) Within fourteen days of service of an owner’s notice of appeal under paragraph (a)(1) of this section and upon payment of the fee set forth in § 41.20(b)(1), a requester who has not filed a notice of appeal may file a notice of cross appeal with respect to any final decision favorable to the patentability, including any final determination not to make a proposed rejection, of any original, proposed amended, or new claim of the patent.
(c) The notice of appeal or cross appeal in the proceeding must identify the appealed claim(s) and must be signed by the owner, the requester, or a duly authorized attorney or agent.
(d) An appeal or cross appeal, when taken, must be taken from all the rejections of the claims in a Right of Appeal Notice which the patent owner proposes to contest or from all the determinations favorable to patentability, including any final determination not to make a proposed rejection, in a Right of Appeal Notice which a requester proposes to contest. Questions relating to matters not affecting the merits of the invention may be required to be settled before an appeal is decided.
(e) The time periods for filing a notice of appeal or cross appeal may not be extended.
(f) If a notice of appeal or cross appeal is timely filed but does not comply with any requirement of this section, appellant will be notified of the reasons for non-compliance and given a non-extendable time period within which to file an amended notice of appeal or cross appeal. If the appellant does not then file an amended notice of appeal or cross appeal within the set time period, or files a notice which does not overcome all the reasons for non-compliance stated in the notification of the reasons for non-compliance, that appellant’s appeal or cross appeal will stand dismissed.
In the event that no party to the reexamination files a timely notice of appeal, the prosecution of the reexamination proceeding will be terminated, with the examiner issuing a Notice of Intent to Issue Inter Partes Reexamination Certificate.
Note that a requester is not entitled to file an appeal or cross appeal for proposed rejections which were determined to not raise a substantial new question of patentability or a reasonable likelihood of prevailing.
A party is permitted to file a respondent brief to respond to issues raised by an opposing party’s appellant brief.
- The respondent’s brief may include any arguments previously made of record that support the examiner’s finding with respect to any claim addressed in the opposing party’s appellant brief.
The following lists the steps to an appeal:
- The notice of appeal must identify the appealed claim(s).
- The appeal must be taken from (1) the rejection(s) of the claims in the Right of Appeal Notice (RAN) which the patent owner proposes to contest, or (2) the finding(s) of patentability of claims in the RAN which the third party requester proposes to contest. Therefore:
- A notice of appeal by the patent owner must identify each claim rejected by the examiner that the patent owner intends to contest;
- A notice of appeal by a third party requester must identify each rejection that was previously proposed which the third party requester intends to contest. It is not sufficient to merely appeal from the allowance of a claim (i.e., the examiner’s finding of a claim patentable); the third party requester must identify each previously proposed rejection to be contested.
- The notice of appeal must be signed by the patent owner or the third party requester, or their duly authorized attorney or agent.
2674.01 Cross Appeal After Original Appeal
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(b)
(1) Within fourteen days of service of a requester’s notice of appeal under paragraph (a)(2) of this section and upon payment of the fee set forth in § 41.20(b)(1), an owner who has not filed a notice of appeal may file a notice of cross appeal with respect to the final rejection of any claim of the patent.
(2) Within fourteen days of service of an owner’s notice of appeal under paragraph (a)(1) of this section and upon payment of the fee set forth in § 41.20(b)(1), a requester who has not filed a notice of appeal may file a notice of cross appeal with respect to any final decision favorable to the patentability, including any final determination not to make a proposed rejection, of any original, proposed amended, or new claim of the patent.
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Within fourteen days of service of a patent owner’s notice of appeal, a third party requester who has not filed a notice of appeal may file a notice of cross appeal, the cross appeal being with respect to any final decision (i.e., decision in the RAN) favorable to the patentability of any claim of the patent.
- The time for filing the requester’s notice of cross appeal may not be extended.
Where the notice of cross appeal is timely filed but is defective, e.g., missing fee or missing portion of the fee, no proof of service, signed by an inappropriate party or unsigned, failure to identify the appealed claims; 37 CFR 41.61(f) provides the appropriate party one opportunity to file, within a non-extendable period of one month, an amended notice of cross appeal that corrects the defect(s).
- In addition, 37 CFR 41.61(b) only provides for a cross appeal from a “notice of appeal,” not from a “notice of cross appeal.”
- Thus, if the patent owner files a notice of cross appeal after the original one month/thirty days period for appeal has expired, but within the fourteen days of a first requester’s appeal (which was filed within the original period); a second third party requester does not have fourteen days from the patent owner’s cross appeal.
- In such a situation, the time for the second requester to appeal (the original one month/thirty days) has expired and the second requester cannot appeal.
The content of a notice of cross appeal is the same as that for a notice of appeal, except that the notice of cross appeal is titled as such and identifies the original appeal from which the cross appeal is taken.
- Where a party inadvertently fails to title or identify a notice of cross appeal as such (i.e., the format for an original appeal is used), in an appeal filed after the original one month/thirty days has expired but before the “fourteen days” have expired, the examiner will construe the notice of appeal as the filing of a notice of cross appeal timely filed within the fourteen days.
