1216.01 Appeals to the U.S. Court of Appeals for the Federal Circuit [R-07.2022]

Filing an appeal to the U.S. Court of Appeals for the Federal Circuit requires that the applicant (A) file in the U.S. Patent and Trademark Office a written notice of appeal (35 U.S.C. 142) directed to the Director; (B) file a copy of the notice of appeal with the Board in the manner provided in 37 CFR 41.10(a), 41.10(b), or 42.6(b), as appropriate; and (C) file with the Clerk of the Federal Circuit a copy of the notice of appeal and pay the docket fee for the appeal, as provided by Federal Circuit Rule 52. 37 CFR 90.2(a).

Additionally, the owner of a patent involved in an ex parte reexamination proceeding must comply with these requirements, and additionally must also serve the notice of appeal as provided in 37 CFR 1.550(f). 37 CFR 90.2(a)(3)(i). A party appealing the Board’s decision in an inter partes review, post-grant review, covered business method patent review, or derivation proceeding must include sufficient information in the notice of appeal to allow the Director to determine whether to exercise the right to intervene in the appeal pursuant to 35 U.S.C. 143, and must serve the notice of appeal as provided in 37 CFR 42.6(e).

An adverse party in a derivation proceeding appealed to the U.S. Court of Appeals for the Federal Circuit electing to have further judicial review proceedings conducted under 35 U.S.C. 146 must file a notice of election under 35 U.S.C. 141(d) with the Office as provided in 37 CFR 104.2. Such a party must also file a copy of the notice of election with the Board in the manner provided in 37 CFR 42.6(b), and, where necessary, must serve a copy of the notice of election pursuant to 37 CFR 42.6(e).

For a notice of appeal to be considered timely filed in the U.S. Patent and Trademark Office, it must: (A) actually reach the U.S. Patent and Trademark Office within the time specified in 37 CFR 90.3 (including any extensions) or (B) be mailed within the time specified in 37 CFR 90.3 (including any extensions) by Priority Mail Express® in accordance with 37 CFR 1.10.

A Notice of Appeal to the U.S. Court of Appeals for the Federal Circuit should not be mailed to the Director, the Board or the examiner. Nor should it be mailed to the Office of the Solicitor’s mail service address for court papers given in MPEP § 1216. Instead, it should be filed in the U.S. Patent and Trademark Office in any one of the following ways:

• (A) By mail addressed to the mailing address provided in 37 CFR 104.2(a), in which case the notice of appeal must actually reach the U.S. Patent and Trademark Office by the due date.

• (B) By Priority Mail Express® under 37 CFR 1.10 addressed to the mailing address provided in 37 CFR 104.2(a), in which case the notice of appeal is deemed filed on the “date-accepted” on the Priority Mail Express® mailing label.

• (C) By hand as provided in 37 CFR 104.2(b).

A copy of the notice of appeal and the docket fee should be filed with the Clerk of the U.S. Court of Appeals for the Federal Circuit, whose mailing and actual address is:

U.S. Court of Appeals for the Federal Circuit
717 Madison Place, N.W.
Washington, DC 20439

The Solicitor, prior to a decision by the U.S. Court of Appeals for the Federal Circuit, may request that the case be remanded to the U.S. Patent and Trademark Office and prosecution reopened. See MPEP § 1214.07.

After the U.S. Court of Appeals for the Federal Circuit has heard and decided the appeal, the Clerk of the U.S. Court of Appeals for the Federal Circuit forwards to the U.S. Patent and Trademark Office a certified copy of the court’s decision. This certified copy is known as the “mandate.” The mandate is entered in the file of the application, reexamination or interference which was the subject of the appeal. The date the mandate was issued by the Federal Circuit marks the conclusion of the appeal, i.e., the termination of proceedings as that term is used in 35 U.S.C. 120. See 37 CFR 1.197.

The U.S. Court of Appeals for the Federal Circuit’s opinion may or may not be precedential. Whether or not the opinion is precedential, the U.S. Patent and Trademark Office will not give the public access to the administrative record of an involved application unless it is otherwise available to the public under 37 CFR 1.11. However, since the court record in a 35 U.S.C. 141 appeal generally includes a copy of at least part of the application, the application may be inspected at the Federal Circuit. In re Mosher, 248 F.2d 956, 115 USPQ 140 (CCPA 1957).

If all claims in the case stand rejected, proceedings in the case are considered terminated on the issue date of the U.S. Court of Appeals for the Federal Circuit’s mandate. Because the case is no longer considered pending, it is ordinarily not open to subsequent amendment and prosecution by the applicant. Continental Can Company v. Schuyler, 326 F. Supp. 283, 168 USPQ 625 (D.D.C. 1970). An applicant wanting to continue prosecution must file a continuation prior to the court mandate being entered. Failure to file the continuation prior to the mandate will prevent co-pendency with the parent application. The procedure set forth in 37 CFR 1.114 is not available in an application after the filing of a Notice of Appeal to the Federal Circuit or the commencement of a civil action in federal district court, unless the appeal or civil action is terminated and the application is still pending. Once the application is returned to the examiner, a notice of abandonment should be mailed, unless the mandate clearly indicates that further action in the U.S. Patent and Trademark Office (USPTO) is to be taken in accordance with the U.S. Court of Appeals for the Federal Circuit’s opinion. The application may not be revived on petition to the USPTO, as the USPTO has no jurisdiction and lacks the authority to consider a petition to revive. In accordance with Morganroth v. Quigg, 885 F.2d 843, 845, 12 USPQ2d 1125, 1126 (Fed. Cir. 1989), the subject application may not be revived by the USPTO on petition because the USPTO’s authority to revive applications does not extend to an alleged abandonment resulting from actions taken in proceedings outside the agency.

Where the case includes one or more allowed claims, including claims allowed by the examiner prior to appeal and claims whose rejections were reversed by either the Board or the court, the proceedings are considered terminated only as to any claims which still stand rejected. Claims indicated as allowable but objected to prior to appeal because of their dependency from rejected claims will be treated as if they were rejected.

The following examples illustrate the appropriate approach to be taken by the examiner in various situations in applications:

• (A) If claims 1-2 are pending, the court affirms a rejection of independent claim 1, dependent claim 2 was objected to prior to forwarding of the appeal as being allowable except for its dependency from claim 1 and claim 2 remains in dependent form, the examiner should hold the application abandoned as there is no remaining time period to redraft claim 2 in independent form.
• (B) If the court affirms a rejection against an independent claim and reverses all rejections against a claim dependent thereon, the examiner should proceed in one of two ways:
  • (1) Convert the dependent claim into independent form by examiner’s amendment, cancel all claims in which the rejection was affirmed, and issue the application; or
  • (2) Set a 2-month time limit in which appellant may rewrite the dependent claim(s) in independent form. Extensions of time under 37 CFR 1.136(a) are available. If no timely reply is received, the application is abandoned because no claims stand allowed.

It is not necessary for the applicant or patent owner to cancel the rejected claims, since they may be canceled by the examiner in an examiner’s amendment. Thus, if no formal matters remain to be attended to, the examiner will pass the application to issue forthwith on the allowed claims or, in the case of a reexamination, will issue a “Notice of Intent to Issue a Reexamination Certificate.” See MPEP § 2287. The examiner should set forth the reasons for allowance, referring to and incorporating a copy of the appellate brief and the court decision. See MPEP § 1302.14.

If formal matters remain to be attended to, the examiner promptly should take appropriate action on such matters, such as by an examiner’s amendment or by an Office action setting a two month shortened statutory period for reply. However, the application or reexamination proceeding is considered closed to further prosecution except as to such matters.

Where the decision of the court brings up for action on the merits claims which were not previously considered on the merits (such as a decision reversing a rejection of generic claims in an application containing claims to nonelected species), the examiner will take the case up for appropriate action on the matters thus brought up.

In some situations it may be necessary to reopen prosecution of an application after a court decision. Any Office action proposing to reopen prosecution after a court decision must be forwarded to the Office of the Deputy Commissioner for Patent Examination Policy for written approval, which will be indicated on the Office action.

After an appeal is docketed in the U.S. Court of Appeals for the Federal Circuit, failure to prosecute the appeal, such as by appellant’s failure to file a brief, may result in dismissal of the appeal by the court. Under particular circumstances, the appeal also may be dismissed by the court on motion of the appellant and/or the Director.

The court proceedings are considered terminated as of the date of the mandate. After dismissal, the action taken by the examiner will be the same as set forth above under the heading “Office Procedure Following Decision by the U.S. Court of Appeals for the Federal Circuit.”

In the event of a dismissal for a reason other than failure to prosecute the appeal, the status of the application or reexamination proceeding must be determined according to the circumstances leading to the dismissal.

1216.02 Civil Suits Under 35 U.S.C. 145 and 146 [R-01.2024]

A civil action under 35 U.S.C. 145 or 146 is commenced by filing a complaint in the U.S. District Court for the Eastern District of Virginia within the time specified in 37 CFR 90.3(a)(3)(i) (see MPEP § 1216). Furthermore, copies of the complaint and summons must be served in a timely manner on the Director, the U.S. Attorney for the Eastern District of Virginia, and the Attorney General in the manner set forth in Rule 4(i) of the Federal Rules of Civil Procedure.  All the expenses of the proceedings shall be paid by the applicant (see 35 U.S.C. 145).

The party initiating an action under 35 U.S.C. 146 must also file a copy of the complaint with the Board in the manner provided in 37 CFR 42.6(b) no later than five days after filing the complaint in district court. 37 CFR 90.2(c). Failure to comply with this requirement can result in further action within the Office consistent with the final Board decision.

In an action under 35 U.S.C. 145, the plaintiff may introduce evidence not previously presented to the U.S. Patent and Trademark Office.

Upon termination of the civil action, a statement of the court’s final disposition of the case is placed in the electronic file, which is then returned to the examiner for action in accordance with the same procedures as follow termination of a 35 U.S.C. 141 appeal. See MPEP § 1216.01. 37 CFR 1.197(b) provides that a civil action is terminated when the time to appeal the judgment expires. Where the exact date when the civil action was terminated is material, the date may be ascertained from the Office of the Solicitor.

The procedures to be followed in the U.S. Patent and Trademark Office after a decision, remand, or dismissal of the case by the district court are the same as the procedures followed with respect to 35 U.S.C. 141 appeals. See MPEP § 1216.01.

Any subpoena by the district court for an application or reexamination file should be hand-carried to the Office of the Solicitor.