Appeal in Ex Parte Reexamination
Ninth Edition of the MPEP, Revision 10.2019, Last Revised in June 2020
2273 Appeal in Ex Parte Reexamination [R-07.2015]
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.
A patent owner who is dissatisfied with the primary examiner’s decision to reject claims in an ex parte reexamination proceeding may appeal to the Board for review of the examiner’s rejection by filing a notice of appeal within the required time. A third party requester may not appeal, and may not participate in the patent owner’s appeal.
The patent owner may appeal to the Board only after the final rejection of the claims. This is based on the version of 35 U.S.C. 134 as amended by Public Law 106-113. This version of 35 U.S.C. 134 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.
The notice of appeal need not be signed. See 37 CFR 41.31(b). The fee required by 37 CFR 41.20(b)(1) must accompany the notice of appeal. See 37 CFR 41.31(a)(2) and (a)(3).
The period for filing the notice of appeal is the period set for response in the last Office action which is normally 2 months. The timely filing of a first response to a final rejection having a shortened statutory period for response is construed as including a request to extend the period for response an additional two months, even if an extension has been previously granted, as long as the period for response does not exceed 6 months from the date of the final rejection. The normal ex parte appeal procedures set forth at 37 CFR 41.31 through 37 CFR 41.54 apply in ex parte reexamination, except as pointed out in this Chapter. A third party requester may not appeal or otherwise participate in the appeal.
The reexamination statute does not provide for review of a patentability decision favoring the patentee. Greenwood v. Seiko Instruments, 8 USPQ2d 1455 (D.D.C. 1988).
See MPEP § 1204 for a discussion of the requirements for a proper appeal. However, note that in the unusual circumstances where an appeal is defective (e.g., no proof of service is included, it was filed for the wrong proceeding), patent owner should not be advised by the examiner to obtain an extension of time under 37 CFR 1.136(a), because an extension of time under 37 CFR 1.136 cannot be obtained in a reexamination proceeding.
Where a notice of appeal is defective, the patent owner will be so notified. In third party requested reexaminations, Form PTOL-475 will be used to provide the notification. A time period of one month or thirty days, whichever is longer, will be provided for the patent owner to cure the defect(s) in the appeal. In patent owner requested reexaminations (including reexaminations ordered under 35 U.S.C. 257 ) or Director ordered reexaminations, Form PTO-2311 will be used to provide the notification, and a two-month time period will be provided for the patent owner to cure the defect(s) in the appeal. An explanation of the defect(s) in the notice of appeal must accompany the appropriate form for providing the notification of the defects (PTOL-475 or PTO-2311).
If the patent owner does not timely file a notice of appeal and/or does not timely file the appropriate appeal fee, the patent owner will be notified that the appeal is dismissed. Form PTOL-468 may be used to provide the notification. The reexamination prosecution is then terminated, and a Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) will subsequently be issued indicating the status of the claims at the time of final rejection (or after the second rejection of the claims, where an appeal was taken from that action without waiting for a final rejection). See MPEP § 2287.