| Appeals and Interferences |
Referenced Items (313, 314, 315, 316, 317, 318, 319, 320, 321, 322, 323, 324, 325, 326) |
(314) Clarification of the Date of Decision of the
Board of Patent Appeals and Interferences
Under 37 CFR 1.304
This notice clarifies that the date of decision of the Board of Patent
Appeals and Interferences (BPAI) under 37 CFR 1.304 is the "mailing date"
or "notification date" indicated on form PTOL-90 accompanying the BPAI
decision. On July 31, 2009, the U.S. Court of Appeals for the Federal
Circuit held that the date of decision of the BPAI under 37 CFR 1.304 is
the mailing date of the decision rather than the date typed on the first
page of the decision by the BPAI. In re McNeil-PPC, Inc., slip op. at 4-7
(Fed. Cir. July 31, 2009).
On June 2, 2009, the Office expanded the e-Office Action program to
permit all Private Patent Application Information Retrieval (PAIR) users to
participate. See Electronic Office Action, 1343 Off. Gaz. Pat. Office, 45
(June 2, 2009). Under the e-Office Action program, participants receive
notifications via electronic mail of the Office communications retrievable
through Private PAIR in lieu of paper mailings of Office communications,
with a few exceptions (e.g., reexamination proceedings and interference
proceedings are not included in the program). The Official Gazette notice
for the e-Office Action program stated that the two-month time period set
forth in 37 CFR 1.304 is not measured from the mailroom/notification date,
but instead is measured from the date typed on the first page of the
decision by the BPAI. This statement is in error, in view of Federal
Circuit McNeil decision, and is hereby withdrawn. This withdrawal will
apply to BPAI decisions mailed before, on or after the publication date of
this notice.
Accordingly, the two-month time period set forth in 37 CFR 1.304 for
filing a notice of appeal to the U.S. Court of Appeals for the Federal
Circuit, or for commencing a civil action, starts on: (1) the mailing date
of the BPAI decision if the decision is mailed to the appellant, or (2) the
notification date of the BPAI decision if electronic mail notification is
sent to the appellant under the e-Office Action program, as indicated on
form PTOL-90 accompanying the BPAI decision. For example, a notice of
appeal under 37 CFR 1.302 for an appeal of a decision by the BPAI to the
U.S. Court of Appeals for the Federal Circuit filed within two months from
the mailing date or notification date of the BPAI decision would be
considered timely.
Any inquiry regarding this notice may be directed to Joni Y. Chang,
Senior Legal Advisor, Office of Patent Legal Administration, Office of the
Deputy Commissioner for Patent Examination Policy, by telephone at (571)
272-7720 or (571) 272-7701, or by electronic mail at
Patent.Practice@uspto.gov.
September 11, 2009 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1347 OG 48]
Top of Notices (314) December 27, 2011