Appeal to Courts
Ninth Edition of the MPEP, Revision 10.2019, Last Revised in June 2020
2279 Appeal to Courts [R-10.2019]
A patent owner who is not satisfied with the decision of the Board may seek judicial review.
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 version of 35 U.S.C. 141 and 35 U.S.C. 145 as they were amended by Public Law 106-113. This 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 and the proceeding was commenced before September 16, 2012. See Section 13202(d) of Public Law 107-273. Similarly, 35 U.S.C. 141(b), as further amended by Public Law 112-29 (effective September 16, 2012), only provides for appeal of a final decision in a reexamination proceeding to the United States Court of Appeals for the Federal Circuit.
A third party requester of an ex parte reexamination may not seek judicial review. Yuasa Battery v. 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 Reed v. 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 of Patents & Trademarks, 853 F.2d 878, 7 USPQ2d 1487 (Fed. Cir. 1988).