MPEP § 2279 — Appeal to Courts (Annotated Rules)
§2279 Appeal to Courts
This page consolidates and annotates all enforceable requirements under MPEP § 2279, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Appeal to Courts
This section addresses Appeal to Courts. Primary authority: 35 U.S.C. 141, 35 U.S.C. 145, and 35 U.S.C. 141(b). Contains: 1 prohibition, 3 permissions, and 5 other statements.
Key Rules
Civil Action
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.
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).
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).
AIA Effective Dates
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.
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.
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.
Third Party Requester Rights
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).
Appeals in Reexamination
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).
PTAB Jurisdiction
A patent owner who is not satisfied with the decision of the Board may seek judicial review.
Citations
| Primary topic | Citation |
|---|---|
| AIA Effective Dates Civil Action | 35 U.S.C. § 141 |
| AIA Effective Dates Civil Action | 35 U.S.C. § 141(b) |
| AIA Effective Dates Civil Action | 35 U.S.C. § 145 |
| Civil Action Third Party Requester Rights | MPEP § 1216 |
| Civil Action Third Party Requester Rights | In re Etter, 756 F.2d 852, 225 USPQ 1 (Fed. Cir. 1985) |
| Civil Action Third Party Requester Rights | and Reed v. Quigg, 230 USPQ 62 (D.D.C. 1986) |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 2279 — Appeal to Courts
Source: USPTO2279 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).