MPEP 1216
Judicial Review

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018

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1216    Judicial Review [R-11.2013]

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

  • (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.

35 U.S.C. 145  Civil action to obtain patent.

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.

35 U.S.C. 306  Appeal.

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.

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).
  • (c) For a civil action under 35 U.S.C. 146. The party initiating an action under 35 U.S.C. 146 must file a copy of the complaint no later than five business days after filing the complaint in district court with the Patent Trial and Appeal Board in the manner provided in § 42.6(b), and the Office of the Solicitor pursuant to § 104.2. Failure to comply with this requirement can result in further action within the United States Patent and Trademark Office consistent with the final Board decision.

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.

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 (35 U.S.C. 141 ) or by a civil action in the U.S. District Court for the Eastern District of Virginia (35 U.S.C. 145 ). By filing an appeal to the U.S. Court of Appeals for the Federal Circuit, the applicant waives the right to seek judicial review by a civil action under 35 U.S.C. 145. See 35 U.S.C. 141.

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 pursuant to 35 U.S.C. 141. 35 U.S.C. 306.

Because inter partes reexamination procedures are found in Chapter 31 (and not in Chapter 30) of Title 35 of the United States Code, 35 U.S.C. 306  does not apply to an inter partes reexamination proceeding. Instead, pre-AIA 35 U.S.C. 315 continues to apply to inter partes reexamination proceedings. See Leahy-Smith America Invents Act, Pub. L. No. 112-29 § 6(c)(3)(C) and 37 CFR 90.1. Accordingly, the regulations in effect on July 1, 2012 govern judicial review of such proceedings, and this MPEP section does not apply to them. See MPEP § 2683 for further information regarding judicial review of inter partes reexamination proceedings.

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 pursuant to 35 U.S.C. 141. See 35 U.S.C. 319 and 35 U.S.C. 329.

A party dissatisfied with the final written decision of the Board in a derivation proceeding may seek judicial review either by appealing the decision to the United States Court of Appeals for the Federal Circuit pursuant to 35 U.S.C. 141 or filing a civil action pursuant to 35 U.S.C. 146. An adverse party in a derivation proceeding appealed to the Federal Circuit may elect to have further judicial review proceedings conducted under 35 U.S.C. 146 instead.

Any notice of appeal filed in an inter partes review, post-grant review, covered business method review, or derivation proceeding 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. See 37 CFR 90.2(a)(3)(ii).

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. 37 CFR 90.3(a). The time for filing a notice of election, and for commencing a civil action pursuant to a notice of election, in an appeal from a derivation proceeding is governed by 35 U.S.C. 141(d). See 37 CFR 90.2(a)(2). However, if a timely request for rehearing of the Board’s decision is filed, the time for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit or for commencing a civil action expires 63 days after a decision on a request for rehearing or reconsideration (37 CFR 90.3(b)(1) ).

The times specified in 37 CFR 90.3 are calendar days. If the last day of the time specified for appeal or commencing a civil action falls on a Federal holiday in the District of Columbia, the time is extended to the next day which is neither a Saturday, Sunday, nor a Federal holiday (37 CFR 90.3(b)(2) ).

V.    TIME FOR FILING CROSS-APPEAL OR CROSS-ACTION

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 U.S. Court of Appeals for the Federal Circuit. See 37 CFR 90.3(a)(1).

VI.    EXTENSION OF TIME TO SEEK JUDICIAL REVIEW

In 37 CFR 90.3(c), the Office has adopted a standard which is similar to the standard used in the Federal courts for granting extensions. Under the rule, the Director may extend the time (A) for good cause if requested before the expiration of the time provided for initiating judicial review or (B) 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.

Requests for extension of time to seek judicial review under 37 CFR 90.3(c) should be addressed or served as provided in 37 CFR 104.2. In addition, to expedite the handling of such a request, a copy of the request may be provided to the Office of the Solicitor as follows:

Mail Stop 8

Office of the Solicitor

United States Patent and Trademark Office

P.O. Box 1450

Alexandria, VA 22313-1450

A copy of the request may also be hand-carried to the Office of the Solicitor.

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.

During judicial review, the involved application or reexamination is not under the jurisdiction of the examiner or the Board, unless remanded to the U.S. Patent and Trademark Office by the court. Any amendment can be admitted only under the provisions of 37 CFR 1.198. See MPEP § 1214.07.

VIII.    SERVICE OF COURT PAPERS ON THE DIRECTOR

See MPEP § 1216.01 for the proper way to effect service on the Director of a notice of appeal to the U.S. Court of Appeals for the Federal Circuit. See MPEP § 1216.02 for the proper way to effect service on the Director of a complaint in a civil action.

Rule 5(b) of the Federal Rules of Civil Procedure provides that if a party is represented by an attorney, service under this rule must be made on the attorney unless the court orders service on the party. The rule sets forth proper ways to serve papers, including delivering papers to the person or the person's office, or mailing papers to the person's last known address.

Similarly, Rule 25(b) of the Federal Rules of Appellate Procedure provides that "[s]ervice on a party represented by counsel must be made on the party’s counsel."

Accordingly, all service copies of papers filed in court proceedings in which the Director is a party must be served on the Office of the Solicitor. Service on the Office of the Solicitor may be effected in either of the following ways:

  • (A) By hand between 8:30 A.M. and 5:00 P.M. EST to the Office of the Solicitor at 600 Dulany Street, Madison West Building, Room 8C43, Alexandria, VA 22314.
  • (B) By mail in an envelope addressed as follows:

Mail Stop 8

Office of the Solicitor

United States Patent and Trademark Office

P.O. Box 1450

Alexandria, VA 22313-1450

While the above mail service address may be supplemented to include the name of the particular attorney assigned to the court case, it must not be supplemented to refer to either the Director or the U.S. Patent and Trademark Office.

Any court papers submitted to the U.S. Patent and Trademark other than by mail to the above mail service address or delivered by hand to the Office of the Solicitor are deemed to have been served on the Director when actually received in the Office of the Solicitor.

The above mail service address should not be used for noncourt papers, i.e., papers which are intended to be filed in the U.S. Patent and Trademark Office in connection with an application or other proceeding pending in the U.S. Patent and Trademark Office. ANY NONCOURT PAPERS WHICH ARE MAILED TO THE ABOVE MAIL SERVICE ADDRESS WILL BE RETURNED TO THE SENDER. NO EXCEPTIONS WILL BE MADE TO THIS POLICY.