What is the purpose of a civil action under 35 U.S.C. 145?

Question

Accepted Answer

Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-27 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. A civil action under 35 U.S.C. 145 provides an alternative to an appeal to the Court of Appeals for the Federal Circuit for an applicant dissatisfied with the decision of the Patent Trial and Appeal Board (PTAB). The MPEP states: “Under 35 U.S.C. 145, an applicant dissatisfied with the decision of the Board may, unless appeal has been taken to the Court of Appeals for the Federal Circuit (CAFC), have remedy by civil action against the Director in the United States District Court for the Eastern District of Virginia.” This civil action allows the applicant to introduce new evidence that was not presented to the USPTO during prosecution, potentially strengthening their case for patent grant. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Appeal to District Court for Patent Invention MPEP 1216 Required Appeal to Federal Circuit for Ex Parte Reexamination MPEP 1216 Permitted Appeal to Federal Circuit for IPR, PGR, and CBM Decisions MPEP 1216 Permitted Judicial Review for Patent Trial and Appeal Board Decisions MPEP 1216 Appeal to Federal Circuit Only for Dissatisfied Patent Owners MPEP 1216 Permitted Copy Must Be Filed with Patent Trial and Appeal Board MPEP 1216 Required Applicant Can Appeal Board Decision to Federal Circuit MPEP 1216 Permitted Requirements for Filing an Appeal to the Federal Circuit MPEP 1216 Required Time for Commencing Civil Action Under 141(d) MPEP 1216 Required Waive Civil Action by Filing Appeal to Federal Circuit MPEP 1216 Other Related FAQs 5 FAQs Collapse When are proceedings considered terminated in a patent application? How can court decisions affect the termination of patent application proceedings? How does a civil action under 35 U.S...