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2279    Appeal to Courts [R-11.2013]

A patent owner who is not satisfied with the decision of the Board may seek judicial review.

In an ex parte reexamination filed before November 29, 1999, the patent owner may appeal the decision of the Board to either (A) the United States Court of Appeals for the Federal Circuit pursuant to 35 U.S.C. 141, or (B) the United States District Court for the District of Columbia pursuant to 35 U.S.C. 145. This is based on the version of 35 U.S.C. 141 and 35 U.S.C. 145 in existence prior to the amendment of the reexamination statute on November 29, 1999 by Public Law 106-113. This “prior version” of 35 U.S.C. 141 and 35 U.S.C. 145 applies to appeals in reexamination, where the reexamination was filed in the Office before November 29, 1999. See Section 13202(d) of Public Law 107-273.

In an ex parte reexamination filed on or after November 29, 1999, the patent owner may appeal the decision of the Board only to the United States Court of Appeals for the Federal Circuit pursuant to 35 U.S.C. 141. This is based on the current version of 35 U.S.C. 141 and 35 U.S.C. 145 as they were amended by Public Law 106-113. This “current version” of 35 U.S.C. 141 and 35 U.S.C. 145 applies to appeals in reexamination, where the reexamination was filed in the Office on or after November 29, 1999. See Section 13202(d) of Public Law 107-273.

A third party requester of an ex parte reexamination may not seek judicial review. Yuasa Batteryv. Comm’r, 3 USPQ2d 1143 (D.D.C. 1987).

While the reexamination statutory provisions do not provide for participation by any third party requester during any court review, the courts have permitted intervention by a third party requester in appropriate circumstances. See In re Etter, 756 F.2d 852, 225 USPQ 1 (Fed. Cir. 1985) and Reedv. Quigg, 230 USPQ 62 (D.D.C. 1986). See also MPEP §§ 1216, 1216.01, and 1216.02. A third party requester who is permitted to intervene in a civil action has no standing to appeal the court’s decision, Boeing Co. v. Comm’r, 853 F.2d 878, 7 USPQ2d 1487 (Fed. Cir. 1988).

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Last Modified: 03/27/2014 10:10:34