2683 Appeal to Courts
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[Editor Note: Not applicable to proceedings commenced on or after September 16, 2012. See 35 U.S.C. 141 for the law otherwise applicable.]
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A patent owner, or a third-party requester in an inter partes reexamination proceeding, who is in any reexamination proceeding dissatisfied with the final decision in an appeal to the Board of Patent Appeals and Interferences under section 134 may appeal the decision only to the United States Court of Appeals for the Federal Circuit.
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(a) The patent owner or third party requester in an inter partes reexamination proceeding who is a party to an appeal to the Patent Trial and Appeal Board and who is dissatisfied with the decision of the Patent Trial and Appeal Board may, subject to § 41.81, appeal to the U.S. Court of Appeals for the Federal Circuit and may be a party to any appeal thereto taken from a reexamination decision of the Patent Trial and Appeal Board.
(b) The appellant must take the following steps in such an appeal:
(1) In the U.S. Patent and Trademark Office, timely file a written notice of appeal directed to the Director in accordance with §§ 1.302 and 1.304;
(2) In the U.S. Court of Appeals for the Federal Circuit, file a copy of the notice of appeal and pay the fee, as provided for in the rules of the U.S. Court of Appeals for the Federal Circuit; and
(3) Serve a copy of the notice of appeal on every other party in the reexamination proceeding in the manner provided in § 1.248.
(c) If the patent owner has filed a notice of appeal to the U.S. Court of Appeals for the Federal Circuit, the third party requester may cross appeal to the U.S. Court of Appeals for the Federal Circuit if also dissatisfied with the decision of the Patent Trial and Appeal Board.
(d) If the third party requester has filed a notice of appeal to the U.S. Court of Appeals for the Federal Circuit, the patent owner may cross appeal to the U.S. Court of Appeals for the Federal Circuit if also dissatisfied with the decision of the Patent Trial and Appeal Board.
(e) A party electing to participate in an appellant’s appeal must, within fourteen days of service of the appellant’s notice of appeal under paragraph (b) of this section, or notice of cross appeal under paragraphs (c) or (d) of this section, take the following steps:
(1) In the U.S. Patent and Trademark Office, timely file a written notice directed to the Director electing to participate in the appellant’s appeal to the U.S. Court of Appeals for the Federal Circuit by mail to, or hand service on, the General Counsel as provided in § 104.2;
(2) In the U.S. Court of Appeals for the Federal Circuit, file a copy of the notice electing to participate in accordance with the rules of the U.S. Court of Appeals for the Federal Circuit; and
(3) Serve a copy of the notice electing to participate on every other party in the reexamination proceeding in the manner provided in § 1.248.
(f) Notwithstanding any provision of the rules, in any reexamination proceeding commenced prior to November 2, 2002, the third party requester is precluded from appealing and cross appealing any decision of the Patent Trial and Appeal Board to the U.S. Court of Appeals for the Federal Circuit, and the third party requester is precluded from participating in any appeal taken by the patent owner to the U.S. Court of Appeals for the Federal Circuit.
I. APPEAL TO UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT IS AVAILABLE
A. For Any Inter Partes Reexamination Proceeding “Commenced” on or After November 2, 2002
1. Appeal to the Federal Circuit
A patent owner or a third party requester appellant must take the following steps in such an appeal to the Federal Circuit:
- Timely file a written notice of appeal directed to the Director of the USPTO which should preferably provide sufficient information to allow the Director to determine whether to exercise the right to intervene in the appeal;
- In the Federal Circuit, file a copy of the notice of appeal and pay the fee, as provided for in the rules of the Federal Circuit; and
- Serve a copy of the notice of appeal on every other party in the reexamination proceeding.
2. Cross Appeal
If the patent owner has filed a notice of appeal to the Federal Circuit, the third party requester may cross appeal to the Federal Circuit if also dissatisfied with the decision of the Board.
If the third party requester has filed a notice of appeal to the Federal Circuit, the patent owner may cross appeal to the Federal Circuit if also dissatisfied with the decision of the Board.
Such cross appeals would be taken under the rules of the Federal Circuit for cross appeals.
- Any notice of cross appeal should preferably provide sufficient information to allow the Director to determine whether to exercise the right to intervene in the appeal.
3. Participation in Other Party’s Appeal
The patent owner and the third party requester may each be a party to, i.e., participate in, each other’s appeal to the Federal Circuit from an inter partes reexamination decision of the Board.
A party electing to participate in an appellant’s appeal must, within fourteen days of service of the appellant’s notice of appeal or notice of cross appeal, take the following steps:
- In the Office, timely file a written notice directed to the Director of the USPTO electing to participate in the appellant’s appeal to the Federal Circuit;
- In the Federal Circuit, file a copy of the notice electing to participate; and
- Serve a copy of the notice electing to participate on every other party in the reexamination proceeding
B. For Any Inter Partes Reexamination Proceeding "Commenced" Prior to November 2, 2002
In any reexamination proceeding commenced prior to November 2, 2002, only the patent owner can appeal to the U.S. Court of Appeals for the Federal Circuit.
- A patent owner in a reexamination proceeding commenced prior to November 2, 2002, who is dissatisfied with the decision of the Board may appeal to the Federal Circuit.
II. APPEAL TO U.S. DISTRICT COURT IS NOT AVAILABLE
The remedy by civil action is not available to the patent owner and the third party requester in an inter partes reexamination proceeding.
Patent owners and third party requesters dissatisfied with a decision of the Board in an inter partes reexamination proceeding are not permitted to file a civil action against the Director of the USPTO in any U.S. District Court.
- Instead, they are limited to appealing decisions of the Office to the Federal Circuit.
» 2684 Information Material to Patentability in Reexamination Proceeding
