1216 Judicial Review
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(a) EXAMINATIONS.—An applicant who is dissatisfied with the final decision in an appeal to the Patent Trial and Appeal Board under section 134(a) may appeal the Board’s decision to the United States Court of Appeals for the Federal Circuit. By filing such an appeal, the applicant waives his or her right to proceed under section 145.
(b) REEXAMINATIONS.—A patent owner who is dissatisfied with the final decision in an appeal of a reexamination to the Patent Trial and Appeal Board under section 134(a) may appeal the Board’s decision only to the United States Court of Appeals for the Federal Circuit.
(c) POST-GRANT AND INTER PARTES REVIEWS.—A party to an inter partes review or a post-grant review who is dissatisfied with the final written decision of the Patent Trial and Appeal Board under section 318(a) or 328(a) (as the case may be) may appeal the Board’s decision only to the United States Court of Appeals for the Federal Circuit.
(d) DERIVATION PROCEEDINGS.—A party to a derivation proceeding who is dissatisfied with the final decision of the Patent Trial and Appeal Board in the proceeding may appeal the decision to the United States Court of Appeals for the Federal Circuit, but such appeal shall be dismissed if any adverse party to such derivation proceeding, within 20 days after the appellant has filed notice of appeal in accordance with section 142, files notice with the Director that the party elects to have all further proceedings conducted as provided in section 146. If the appellant does not, within 30 days after the filing of such notice by the adverse party, file a civil action under section 146, the Board’s decision shall govern the further proceedings in the case.
An applicant dissatisfied with the decision of the Patent Trial and Appeal Board in an appeal under section 134(a) may, unless appeal has been taken to the United States Court of Appeals for the Federal Circuit, have remedy by civil action against the Director in the United States District Court for the Eastern District of Virginia if commenced within such time after such decision, not less than sixty days, as the Director appoints. The court may adjudge that such applicant is entitled to receive a patent for his invention, as specified in any of his claims involved in the decision of the Patent Trial and Appeal Board, as the facts in the case may appear, and such adjudication shall authorize the Director to issue such patent on compliance with the requirements of law. All the expenses of the proceedings shall be paid by the applicant.
The patent owner involved in a reexamination proceeding under this chapter may appeal under the provisions of section 134, and may seek court review under the provisions of sections 141 to 144, with respect to any decision adverse to the patentability of any original or proposed amended or new claim of the patent.
I. JUDICIAL REVIEW OF PATENT APPLICATIONS
An applicant for a patent who is dissatisfied with a final written decision of the Board (other than a decision of the Board in a derivation proceeding) may seek judicial review either by an appeal to the U.S. Court of Appeals for the Federal Circuit or by a civil action in the U.S. District Court for the Eastern District of Virginia.
II. JUDICIAL REVIEW OF REEXAMINATION PROCEEDINGS
A patent owner who is not satisfied with the final written decision of the Board in an ex parte reexamination may seek judicial review of the Board's decision only by appealing the decision of the Board to the U.S. Court of Appeals for the Federal Circuit.
III. JUDICIAL REVIEW OF INTER PARTES REVIEW, POST-GRANT REVIEW, COVERED BUSINESS METHOD REVIEW, AND DERIVATION PROCEEDINGS
A party dissatisfied with the final written decision of the Board in an inter partes review, post-grant review, or covered business method review proceeding may seek judicial review only by appealing the decision to the United States Court of Appeals for the Federal Circuit.
IV. TIME FOR FILING NOTICE OF APPEAL OR COMMENCING CIVIL ACTION
The time for filing a notice of a 35 U.S.C. 141 appeal to the U.S. Court of Appeals for the Federal Circuit or for commencing a civil action under 35 U.S.C. 145 is within 63 days of the Board’s decision.
VI. EXTENSION OF TIME TO SEEK JUDICIAL REVIEW
The Director may extend the time
- for good cause if requested before the expiration of the time provided for initiating judicial review or
- upon a showing of excusable neglect in failing to initiate judicial review if requested after the expiration of the time period.
This standard is applicable once the “last” decision has been entered, i.e., either the decision (in circumstances where no timely rehearing is sought) or the decision on rehearing of the Board in an ex parte appeal.
Extensions of time under 37 CFR 1.136(b) and 37 CFR 1.550(c) and fee extensions under 37 CFR 1.136(a) are not available to extend the time for the purpose of seeking judicial review once a decision or a decision on rehearing has been entered.
VII. APPLICATION UNDER JUDICIAL REVIEW
The administrative file of an application under judicial review will not be opened to the public by the U.S. Patent and Trademark Office, unless it is otherwise available to the public under 37 CFR 1.11.
1216.01 Appeals to the U.S. Court of Appeals for the Federal Circuit
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I. OFFICE PROCEDURE FOLLOWING DECISION BY THE U.S. COURT OF APPEALS FOR THE FEDERAL CIRCUIT
After the U.S. Court of Appeals for the Federal Circuit has heard and decided the appeal, the Clerk of the U.S. Court of Appeals for the Federal Circuit forwards to the U.S. Patent and Trademark Office a certified copy of the court’s decision.
- This certified copy is known as the “mandate.”
- The mandate is entered in the file of the application, reexamination or interference which was the subject of the appeal.
- The date the mandate was issued by the Federal Circuit marks the conclusion of the appeal, i.e., the termination of proceedings.
A. All Claims Rejected
If all claims in the case stand rejected, proceedings in the case are considered terminated on the issue date of the U.S. Court of Appeals for the Federal Circuit’s mandate.
B. Some Claims Allowed
Where the case includes one or more allowed claims, including claims allowed by the examiner prior to appeal and claims whose rejections were reversed by either the Board or the court, the proceedings are considered terminated only as to any claims which still stand rejected.
- It is not necessary for the applicant or patent owner to cancel the rejected claims, since they may be canceled by the examiner in an examiner’s amendment.
- Thus, if no formal matters remain to be attended to, the examiner will pass the application to issue forthwith on the allowed claims or, in the case of a reexamination, will issue a “Notice of Intent to Issue a Reexamination Certificate.”
C. Remand
Where the decision of the court brings up for action on the merits claims which were not previously considered on the merits (such as a decision reversing a rejection of generic claims in an application containing claims to nonelected species), the examiner will take the case up for appropriate action on the matters thus brought up.
D. Reopening of Prosecution
In some situations it may be necessary to reopen prosecution of an application after a court decision.
II. DISMISSAL OF APPEAL
After an appeal is docketed in the U.S. Court of Appeals for the Federal Circuit, failure to prosecute the appeal, such as by appellant’s failure to file a brief, may result in dismissal of the appeal by the court.
- Under particular circumstances, the appeal also may be dismissed by the court on motion of the appellant and/or the Director.
The court proceedings are considered terminated as of the date of the mandate.
1216.02 Civil Suits Under 35 U.S.C. 145 and 146
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A civil action under 35 U.S.C. 145 or 146 is commenced by filing a complaint in the U.S. District Court for the Eastern District of Virginia.
- The party initiating an action under 35 U.S.C. 146 must also file a copy of the complaint with the Board no later than five days after filing the complaint in district court.
In an action under 35 U.S.C. 145, the plaintiff may introduce evidence not previously presented to the U.S. Patent and Trademark Office.
- However, plaintiff will be precluded from presenting new issues.
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