MPEP § 1216 — MPEP § 1216
Current through: 2022-07-01

1216-Judicial Review 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1200 

 Section 1216 
 

 
 
 
 
 
 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 CFR 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 CFR 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 CFR 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.
 

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

 
 35 U.S.C. 142 
 Notice of appeal. 

 When an appeal is taken to the United States Court of Appeals for
 the Federal Circuit, the appellant shall file in the Patent and Trademark Office a
 written notice of appeal directed to the Director, within such time after the date of
 the decision from which the appeal is taken as the Director prescribes, but in no
 case less than 60 days after that date.
 

 

 
 35 U.S.C. 143 
 Proceedings on appeal. 

 With respect to an appeal described in section 142 ,
 the Director shall transmit to the United States Court of Appeals for the Federal
 Circuit a certified list of the documents comprising the record in the Patent and
 Trademark Office. The court may request that the Director forward the original or
 certified copies of such documents during the pendency of the appeal. In an ex parte
 case, the Director shall submit to the court in writing the grounds for the decision
 of the Patent and Trademark Office, addressing all of the issues raised in the
 appeal. The Director shall have the right to intervene in an appeal from a decision
 entered by the Patent Trial and Appeal Board in a derivation proceeding under section
 135 or in an inter partes or post-grant review under
 chapter 31 or 32 .
 

 

 
 35 U.S.C. 144 
 Decision on appeal. 

 The United States Court of Appeals for the Federal Circuit shall
 review the decision from which an appeal is taken on the record before the Patent and
 Trademark Office. Upon its determination the court shall issue to the Director its
 mandate and opinion, which shall be entered of record in the Patent and Trademark
 Office and shall govern the further proceedings in the case.
 

 

 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 .
 

 I. OFFICE PROCEDURE FOLLOWING DECISION BY THE U.S. COURT OF APPEALS FOR THE
 FEDERAL CIRCUIT 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).
 

 A. All Claims Rejected 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. 
 

 B. Some Claims Allowed 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.
 

 C. Remand 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. 
 

 D. Reopening of Prosecution 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.
 

 II. DISMISSAL OF APPEAL 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.
 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 1201-Introduction 

 1202-Composition of Board 

 1203-Administrative Handling 

 1204-Notice of Appeal 
 1204.01-Reinstatement of Appeal 

 1204.02-Pre-Appeal Brief Review Request and Conference Pilot Program 

 1204.03-Interviews After Notice of Appeal 

 1204.04-Official Record on Appeal 

 
 

 1205-Appeal Brief 
 1205.01-Time for Filing Appeal Brief 

 1205.02-Appeal Brief Content 

 1205.03-Non-Compliant Appeal Brief and Amended Brief 

 
 

 1206-Amendments and Affidavits or Other Evidence Filed With or After Appeal 

 1207-Examiner’s Answer 
 1207.01-Appeal Conference 

 1207.02-Contents of Examiner’s Answer 

 1207.03-New Ground of Rejection in Examiner’s Answer 
 1207.03(a)-Determining Whether a Ground of Rejection is New 

 1207.03(b)-Petition to Designate a New Ground of Rejection and to Reopen Prosecution 

 1207.03(c)-Appellant's Reply to New Grounds of Rejection 

 
 

 1207.04-Reopening of Prosecution After Appeal 

 1207.05-Substitute Examiner’s Answer 

 
 

 1208-Reply Briefs and Fee for Forwarding Appeal 
 1208.01-Fee for Forwarding an Appeal to the Board 

 
 

 1209-Oral Hearing 

 1210-Actions Subsequent to Examiner’s Answer but Before Board’s Decision 

 1211-Remand by Director or Board 
 1211.01-Remand by Board for Further Consideration of Rejection 

 1211.02-Remand To Consider Amendment 

 1211.03-Remand To Consider Affidavits or Declarations 

 1211.04-Remand by Board for Further Search 

 
 

 1212-Board Requires Appellant to Address Matter 

 1213-Decision by Board 
 1213.01-[Reserved] 

 1213.02-New Grounds of Rejection by Board 

 1213.03-Publication of and Public Access to Board Decision 

 
 

 1214-Procedure Following Decision by Board 
 1214.01-Procedure Following New Ground of Rejection by Board 

 1214.02-[Reserved] 

 1214.03-Rehearing 

 1214.04-Examiner Reversed in Whole 

 1214.05-Cancellation of Claims Not Appealed 

 1214.06-Examiner Sustained in Whole or in Part; Claims Require Action 

 1214.07-Reopening of Prosecution 

 
 

 1215-Withdrawal or Dismissal of Appeal 
 1215.01-Withdrawal of Appeal 

 1215.02-Claims Standing Allowed 

 1215.03-Partial Withdrawal 

 1215.04-Dismissal of Appeal 

 
 

 1216-Judicial Review 
 1216.01-Appeals to the U.S. Court of Appeals for the Federal Circuit 

 1216.02-Civil Suits Under 35 U.S.C. 145 and 146 

 
 

 

 

 
 

 
 
 

 
 

 

 
 
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 03/09/2026 20:50:33