MPEP § 2308.04 — Office Procedure Following Decision by the U. S. Court of Appeals for the Federal Circuit (Annotated Rules)

§2308.04 Office Procedure Following Decision by the U. S. Court of Appeals for the Federal Circuit

USPTO MPEP version: BlueIron's Update: 2025-12-31

This page consolidates and annotates all enforceable requirements under MPEP § 2308.04, 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.

Office Procedure Following Decision by the U. S. Court of Appeals for the Federal Circuit

This section addresses Office Procedure Following Decision by the U. S. Court of Appeals for the Federal Circuit. Contains: 1 prohibition and 2 other statements.

Key Rules

Topic

Board Decision Types

2 rules
MPEP GuidanceInformativeAlways
[mpep-2308-04-ac71daeec46b64f2eedea815]
Losing Party Can Appeal Board Decision to CAFC
Note:
The losing party after an interference judgment has the right to appeal an unfavorable Board decision to the U.S. Court of Appeals for the Federal Circuit (CAFC).

The losing party after an interference judgment has the right to appeal an unfavorable Board decision to the U.S. Court of Appeals for the Federal Circuit (CAFC). If the losing party before the Board is unsuccessful after appealing to the CAFC, with all claims being finally refused, and a formal mandate is issued regarding the pending claims then the proceedings in the case are considered terminated on the issue date of the mandate. In accordance with Morganroth v. Quigg, 885 F.2d 843, 12 USPQ2d 1125 (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. See MPEP § 1216.01, subsection I.A.

Jump to MPEP SourceBoard Decision TypesAppeal to Federal CircuitBoard Decision
MPEP GuidanceProhibitedAlways
[mpep-2308-04-466e0d361653f4fd06c74545]
Revival of Application After Abandonment Due to External Actions Not Permitted
Note:
The USPTO cannot revive an application based on abandonment resulting from actions taken in proceedings outside the agency.

The losing party after an interference judgment has the right to appeal an unfavorable Board decision to the U.S. Court of Appeals for the Federal Circuit (CAFC). If the losing party before the Board is unsuccessful after appealing to the CAFC, with all claims being finally refused, and a formal mandate is issued regarding the pending claims then the proceedings in the case are considered terminated on the issue date of the mandate. In accordance with Morganroth v. Quigg, 885 F.2d 843, 12 USPQ2d 1125 (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. See MPEP § 1216.01, subsection I.A.

Jump to MPEP SourceBoard Decision TypesAppeal to Federal CircuitBoard Decision
Topic

PTAB Jurisdiction

1 rules
MPEP GuidanceInformativeAlways
[mpep-2308-04-2a508ab6a76baf4524cbf0dc]
Case Terminated After Final CAFC Refusal
Note:
If the losing party loses on all claims after appealing to the CAFC, the case is terminated upon issuance of a formal mandate.

The losing party after an interference judgment has the right to appeal an unfavorable Board decision to the U.S. Court of Appeals for the Federal Circuit (CAFC). If the losing party before the Board is unsuccessful after appealing to the CAFC, with all claims being finally refused, and a formal mandate is issued regarding the pending claims then the proceedings in the case are considered terminated on the issue date of the mandate. In accordance with Morganroth v. Quigg, 885 F.2d 843, 12 USPQ2d 1125 (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. See MPEP § 1216.01, subsection I.A.

Jump to MPEP SourcePTAB JurisdictionEx Parte Appeals to PTABPTAB Contested Case Procedures

Citations

Primary topicCitation
Board Decision Types
PTAB Jurisdiction
MPEP § 1216.01
Board Decision Types
PTAB Jurisdiction
In accordance with Morganroth v. Quigg, 885 F.2d 843, 12 USPQ2d 1125 (Fed. Cir. 1989)

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.

BlueIron Last Updated: 2025-12-31