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2683    Appeal to Courts [R-11.2013]

35 U.S.C. 141  Appeal to the Court of Appeals for the Federal Circuit.

[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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PART 90 —   JUDICIAL REVIEW OF PATENT TRIAL AND APPEAL BOARD

DECISIONS

Sec.

90.1 Scope.

90.2 Notice; service.

90.3 Time for appeal or civil action.

37 C.F.R. 90.1  Scope.

The provisions herein govern judicial review for Patent Trial and Appeal Board decisions under chapter 13 of title 35, United States Code. Judicial review of decisions arising out of inter partes reexamination proceedings that are requested under 35 U.S.C. 311, and where available, judicial review of decisions arising out of interferences declared pursuant to 35 U.S.C. 135 continue to be governed by the pertinent regulations in effect on July 1, 2012.

37 C.F.R. 90.2  Notice; service.

  • (a) For an appeal under 35 U.S.C. 141.
    • (1) In all appeals, the notice of appeal required by 35 U.S.C. 142 must be filed with the Director of the United States Patent and Trademark Office as provided in § 104.2 of this title. A copy of the notice of appeal must also be filed with the Patent Trial and Appeal Board in the appropriate manner provided in § 41.10(a), 41.10(b), or 42.6(b).
    • (2) In all appeals, the party initiating the appeal must comply with the requirements of the Federal Rules of Appellate Procedure and Rules for the United States Court of Appeals for the Federal Circuit, including:
      • (i) Serving the requisite number of copies on the Court; and
      • (ii) Paying the requisite fee for the appeal.
    • (3) Additional requirements.
      • (i) In appeals arising out of an ex parte reexamination proceeding ordered pursuant to § 1.525, notice of the appeal must be served as provided in § 1.550(f) of this title.
      • (ii) In appeals arising out of an inter partes review, a post-grant review, a covered business method patent review, or a derivation proceeding, notice of the appeal must provide sufficient information to allow the Director to determine whether to exercise the right to intervene in the appeal pursuant to 35 U.S.C. 143, and it must be served as provided in § 42.6(e) of this title.
  • (b) For a notice of election under 35 U.S.C. 141(d) to proceed under 35 U.S.C. 146.
    • (1) Pursuant to 35 U.S.C. 141(d), if an adverse party elects to have all further review proceedings conducted under 35 U.S.C. 146 instead of under 35 U.S.C. 141, that party must file a notice of election with the United States Patent and Trademark Office as provided in § 104.2.
    • (2) A copy of the notice of election must also be filed with the Patent Trial and Appeal Board in the manner provided in § 42.6(b).
    • (3) A copy of the notice of election must also be served where necessary pursuant to § 42.6(e).

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37 C.F.R. 90.3  Time for appeal or civil action.

  • (a) Filing deadline.
    • (1) For an appeal under 35 U.S.C. 141. The notice of appeal filed pursuant to 35 U.S.C. 142 must be filed with the Director of the United States Patent and Trademark Office no later than sixty-three (63) days after the date of the final Board decision. Any notice of cross-appeal is controlled by Rule 4(a)(3) of the Federal Rules of Appellate Procedure, and any other requirement imposed by the Rules of the United States Court of Appeals for the Federal Circuit.
    • (2) For a notice of election under 35 U.S.C. 141(d). The time for filing a notice of election under 35 U.S.C. 141(d) is governed by 35 U.S.C. 141(d).
    • (3) For a civil action under 35 U.S.C. 145 or 146.
      • (i) A civil action must be commenced no later than sixty-three (63) days after the date of the final Board decision.
      • (ii) The time for commencing a civil action pursuant to a notice of election under 35 U.S.C. 141(d) is governed by 35 U.S.C. 141(d).
  • (b) Time computation.
    • (1) Rehearing. A timely request for rehearing will reset the time for appeal or civil action to no later than sixty-three (63) days after action on the request. Any subsequent request for rehearing from the same party in the same proceeding will not reset the time for seeking judicial review, unless the additional request is permitted by order of the Board.
    • (2) Holidays. If the last day for filing an appeal or civil action falls on a Federal holiday in the District of Columbia, the time is extended pursuant to 35 U.S.C. 21(b).
  • (c) Extension of time.
    • (1) The Director, or his designee, may extend the time for filing an appeal, or commencing a civil action, upon written request if:

      • (i) Requested before the expiration of the period for filing an appeal or commencing a civil action, and upon a showing of good cause; or
      • (ii) Requested after the expiration of the period for filing an appeal of commencing a civil action, and upon a showing that the failure to act was the result of excusable neglect.
    • (2) The request must be filed as provided in § 104.2 of this title.

37 C.F.R. 1.983   Appeal to the United States Court of Appeals for the Federal Circuit in inter partes reexamination.

  • (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

Section 13106 of Public Law 107-273, 116 Stat. 1758, 1899-1906 (2002), newly granted the inter partes reexamination third party requester the right to appeal an adverse decision of the Board to the Court of Appeals for the Federal Circuit (Federal Circuit). 35 U.S.C. 315(b)(1). It further authorized the third party requester to be a party to any appeal taken by the patent owner to the Federal Circuit. 35 U.S.C. 315(b)(2). Also, section 13106 of Public Law 107-273 implicitly permitted the patent owner to be a party to the newly provided for appeal taken by the third party requester to the Federal Circuit. This is because 35 U.S.C. 315(a)(2) states that the patent owner involved in an inter partes reexamination proceeding “may be a party to any appeal taken by a third party requester under subsection (b).” The effective date for this revision to the statute is provided in section 13106 of Public Law 107-273 as follows: “The amendments made by this section apply with respect to any reexamination proceeding commenced on or after the date of enactment of this Act.”

1.   Appeal to the Federal Circuit

A patent owner and/or a third party requester in an inter partes reexamination proceeding who is a party to an appeal to the Board and who is dissatisfied with the decision of the Board may, subject to 37 CFR 41.81 , appeal to the Federal Circuit. Pursuant to 37 CFR 41.81, the patent owner and/or third party requester may not appeal to the Federal Circuit until all parties’ rights to request rehearing have been exhausted, at which time the decision of the Board is final and appealable 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 (37 CFR 1.983(b)):

  • (A) In the Office, timely file a written notice of appeal directed to the Director of the USPTO in accordance with 37 CFR 1.302 and 1.304, which should preferably provide sufficient information to allow the Director to determine whether to exercise the right (extended by Public Law 112-29, sec. 7(e)(4), 125 Stat. 284, 315 (2011)) to intervene in the appeal pursuant to 35 U.S.C. 143;
  • (B) 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
  • (C) Serve a copy of the notice of appeal on every other party in the reexamination proceeding in the manner provided in 37 CFR 1.248.

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. 37 CFR 1.983(c).

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. 37 CFR 1.983(d).

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 (extended by Public Law 112-29, sec. 7(e)(4), 125 Stat. 284, 315 (2011)) to intervene in the appeal pursuant to 35 U.S.C. 143.

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 (37 CFR 1.983(e)).

A party electing to participate in an appellant’s appeal must, within fourteen days of service of the appellant’s notice of appeal (37 CFR 1.983(b)(3)) or notice of cross appeal (37 CFR 1.983(c) or (d)), take the following steps:

  • (A) 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;
  • (B) In the Federal Circuit, file a copy of the notice electing to participate; and
  • (C) Serve a copy of the notice electing to participate on every other party in the reexamination proceeding in the manner provided in 37 CFR 1.248.

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. Pursuant to 35 U.S.C. 134(c), as it existed prior to its November 2, 2002 revision via Public Law 107-273, the third party requester is expressly precluded from appealing (and cross appealing) any decision of the Board in an inter partes reexamination proceeding commenced prior to November 2, 2002, to the Federal Circuit. The third party requester is also precluded from participating in any appeal taken by the patent owner to the Federal Circuit.

Pursuant to 37 CFR 1.983, a patent owner in a reexamination proceeding commenced prior to November 2, 2002, who is dissatisfied with the decision of the Board may, subject to 37 CFR 41.81, appeal to the Federal Circuit. Under 37 CFR 41.81, the patent owner may not appeal to the Federal Circuit until all parties’ rights to request rehearing of the Board’s decision have been exhausted, at which time the decision of the Board is final and appealable by the patent owner to the Federal Circuit.

The patent owner must take the following steps in such an appeal:

  • (A) In the Office, timely file a written notice of appeal directed to the Director of the USPTO in accordance with 37 CFR 1.302 and 1.304, which should preferably provide sufficient information to allow the Director to determine whether to exercise the right (extended by Public Law 112-29, sec. 7(e)(4), 125 Stat. 284, 315 (2011)) to intervene in the appeal pursuant to 35 U.S.C. 143;
  • (B) 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
  • (C) Serve a copy of the notice of appeal on the third party requester(s) in the reexamination proceeding in the manner provided in 37 CFR 1.248.

II.   APPEAL TO U.S. DISTRICT COURT IS NOT AVAILABLE

The remedy by civil action under 35 U.S.C. 145 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.

When the optional inter partes reexamination alternative was added to the reexamination statute, the legislation did not provide the parties an avenue of judicial review by civil action under 35 U.S.C. 145 in inter partes reexamination proceedings (nor is this avenue available for ex parte reexamination of a patent that issued from an original application filed on or after November 29, 1999; see MPEP § 2279). Federal District Court proceedings are generally complicated and time consuming and, therefore, are contrary to the goal of expeditious resolution of reexamination proceedings. Accordingly, the first sentence of 35 U.S.C. 145 was amended to read: “An applicant dissatisfied with the decision of the [Board] in an appeal under 134(a) of this title 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 District of Columbia if commenced within such time after such decision, not less than sixty days, as the Director appoints.” (emphasis added). Note that 35 U.S.C. 134 part (a), which is included by 35 U.S.C. 145 is limited to applicants and applications, while 35 U.S.C. 134 parts (b) and (c) which are not included by 35 U.S.C. 145 are directed to reexamination and the patent owner and the third party requester, respectively.

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Last Modified: 03/27/2014 10:10:35