35 U.S.C. § 134 — Appeal to the Patent Trial and Appeal (MPEP Coverage Index) – BlueIron IP

This page consolidates MPEP guidance interpreting 35 U.S.C. § 134, including 66 rules 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.

Summary

This section provides detailed procedures for appealing patent disputes, including the requirement to file an appeal notice with the USPTO after two rejections and key obligations tied to 35 USC § 134.

What this section covers

Defines appeal procedures for patent disputes from decisions made by the United States Patent and Trademark Office (USPTO).

Key obligations

Filing an appeal notice with the USPTO is required for appealing patent decisions.
Timely filing of the appeal notice must be ensured to comply with 35 USC § 134.
The Office personnel are not allowed to testify in quasi-judicial functions, as per court decisions.

Practice notes

Ensure all required information is included in the appeal notice to avoid delays.
Avoid delays in filing the appeal notice to comply with statutory requirements.

Patent Merit Disputes Require Judicial ReviewMPEP 1201Permitted
Appeal Procedure for Merit DisputesMPEP 1201
Appeal Permission After RejectionMPEP 1204
Appeal to PTAB After Two RejectionsMPEP 1204Permitted
Appeal Right for Patent OwnersMPEP 1204
Appeal Right for Patent OwnersMPEP 1204Permitted
Appeal Rights for Patent OwnersMPEP 1204
Applicant Can Appeal Board Decision to Federal CircuitMPEP 1216Permitted
Waiving Section 145 Right by Filing AppealMPEP 1216
Appeal to Federal Circuit Only for Dissatisfied Patent OwnersMPEP 1216Permitted
Appeal to District Court for Patent InventionMPEP 1216Required
Applicant Pays All Proceedings ExpensesMPEP 1216Required
Patent Owner Can Appeal and Seek Review After ReexaminationMPEP 1216Permitted
Improper Markush Grouping RejectionMPEP 2117Permitted
Patent Owner Can Appeal and Seek Review After Reexamination DecisionMPEP 2273Permitted
Adjustment for Appellate Review Delays in Patent TermMPEP 2730
Term Adjusted for Successful Appellate ReviewMPEP 2730Required
Remand Is Final Decision Reversing Adverse Determination of PatentabilityMPEP 2730Required
Request for Continued Examination Required After RemandMPEP 2730Prohibited
Patent Term Adjustment for Interference ProceedingsMPEP 2730
Patent Term Adjustment for Derivation ProceedingsMPEP 2730
Interference Replaced by Derivation Proceedings for Patent Term AdjustmentMPEP 2730
Derivation Proceedings Added to Patent Term Adjustment GuaranteesMPEP 2730
Board of Patent Appeals and Interferences Redesignated as Patent Trial and Appeal BoardMPEP 2730
Patent Term Adjustment for Secrecy OrdersMPEP 2730
Patent Term Adjustment for Successful Appellate ReviewMPEP 2730
Redesignation of Patent Appeals Board TitleMPEP 2730
Patent Trial and Appeal Board Name UpdatedMPEP 2730
Patent Term Adjustment Due to Examination Delay After 3 YearsMPEP 2731
Limitations on Patent Term AdjustmentMPEP 2731
Patent Term Adjustment Excludes Certain Pendency PeriodsMPEP 2731Prohibited
Appeal Brief Due Within Three MonthsMPEP 2732
Compliant Appeal Brief After Non-Compliant One Not Considered FailureMPEP 2732Permitted
Period of Adjustment Reduced for Late Appeal BriefMPEP 2732Required

Appeal to District Court for Patent InventionMPEP 1216Required
Applicant Pays All Proceedings ExpensesMPEP 1216Required
Term Adjusted for Successful Appellate ReviewMPEP 2730Required
Remand Is Final Decision Reversing Adverse Determination of PatentabilityMPEP 2730Required
Requirement for Written Restriction NoticeMPEP 2731Required
Restriction Requirement Is a Notification Under 35 U.S.C. 132MPEP 2731Required
Period of Adjustment Reduced for Late Appeal BriefMPEP 2732Required

Employee Must Testify Only on Personal KnowledgeMPEP 1701.01
Employees Must Not Give Expert or Opinion TestimonyMPEP 1701.01Prohibited
Employees Prohibited from Answering Hypothetical QuestionsMPEP 1701.01Prohibited
Examiner Deposition Must Be Restricted to Relevant FactsMPEP 1701.01Prohibited
Employees Cannot Testify About Privileged MattersMPEP 1701.01Permitted
Employees Cannot Testify About Quasi-Judicial ActionsMPEP 1701.01
Examiner Technical Qualifications Not Relevant in AppealsMPEP 1701.01Prohibited
Appeal Only After Final Rejection In Ex Parte ReexaminationMPEP 2273Permitted
Patent Owner Can Appeal Only After Final Rejection in Ex Parte Reexamination Filing On Or After November 29, 1999MPEP 2273
Patent Owner May Appeal Only After Final Rejection in Ex Parte ReexaminationMPEP 2273
Single Rehearing for SNQ and Merits DecisionsMPEP 2274Permitted
Final Board Decision Directly Appealable to Federal CircuitMPEP 2274
Direct Review Prevents Harassment of Patentees Through Duplicative ExaminationMPEP 2274Prohibited
Single Rehearing for SNQ and Merits DecisionsMPEP 2274
Derivation Proceedings Replaced Interference ProceedingsMPEP 2730
Redesignation of Patent Appeals Board TitleMPEP 2730
Patent Trial and Appeal Board Title ChangedMPEP 2730
Derivation Proceedings Replaced InterferenceMPEP 2730
Derivation Proceedings Replaced Interference ProceedingsMPEP 2730
Derivation Proceedings Added to Patent Term Adjustment for Office DelaysMPEP 2730
Board of Patent Appeals Redesignated as Patent Trial and Appeal BoardMPEP 2730
Amendments Reflecting Derivation Proceedings in Patent Term Adjustment RulesMPEP 2730
Written Restriction Requirement Is a Notification Under 35 U.S.C. 132MPEP 2731
Written Restriction Requirement Is Notification Under 35 U.S.C. 132MPEP 2731
Written Restriction Requirement Is Not AppealableMPEP 2731
Requirement for Written Restriction Notification Under 35 U.S.C. 132MPEP 2731
Written Restriction Requirement Is a Notification Under 35 U.S.C. 132MPEP 2731
Written Restriction Requirement Is a Notice Under 35 U.S.C. 132MPEP 2731
Requirement for Two-Month Reply Period After Written RestrictionMPEP 2731
Written Restriction Requirement Is Not a Notice Under 132MPEP 2731

MPEP Section	Rules
MPEP § 1201	Patent Merit Disputes Require Judicial ReviewMPEP 1201Permitted Appeal Procedure for Merit DisputesMPEP 1201
MPEP § 1204	Appeal Permission After RejectionMPEP 1204 Appeal to PTAB After Two RejectionsMPEP 1204Permitted Appeal Right for Patent OwnersMPEP 1204 Appeal Right for Patent OwnersMPEP 1204Permitted Appeal Rights for Patent OwnersMPEP 1204
MPEP § 1216	Applicant Can Appeal Board Decision to Federal CircuitMPEP 1216Permitted Waiving Section 145 Right by Filing AppealMPEP 1216 Appeal to Federal Circuit Only for Dissatisfied Patent OwnersMPEP 1216Permitted Appeal to District Court for Patent InventionMPEP 1216Required Applicant Pays All Proceedings ExpensesMPEP 1216Required Patent Owner Can Appeal and Seek Review After ReexaminationMPEP 1216Permitted
MPEP § 1701.01	Employee Must Testify Only on Personal KnowledgeMPEP 1701.01 Employees Must Not Give Expert or Opinion TestimonyMPEP 1701.01Prohibited Employees Prohibited from Answering Hypothetical QuestionsMPEP 1701.01Prohibited Examiner Deposition Must Be Restricted to Relevant FactsMPEP 1701.01Prohibited Employees Cannot Testify About Privileged MattersMPEP 1701.01Permitted Employees Cannot Testify About Quasi-Judicial ActionsMPEP 1701.01 Examiner Technical Qualifications Not Relevant in AppealsMPEP 1701.01Prohibited
MPEP § 2117	Improper Markush Grouping RejectionMPEP 2117Permitted
MPEP § 2273	Patent Owner Can Appeal and Seek Review After Reexamination DecisionMPEP 2273Permitted Appeal Only After Final Rejection In Ex Parte ReexaminationMPEP 2273Permitted Patent Owner Can Appeal Only After Final Rejection in Ex Parte Reexamination Filing On Or After November 29, 1999MPEP 2273 Patent Owner May Appeal Only After Final Rejection in Ex Parte ReexaminationMPEP 2273
MPEP § 2274	Single Rehearing for SNQ and Merits DecisionsMPEP 2274Permitted Final Board Decision Directly Appealable to Federal CircuitMPEP 2274 Direct Review Prevents Harassment of Patentees Through Duplicative ExaminationMPEP 2274Prohibited Single Rehearing for SNQ and Merits DecisionsMPEP 2274
MPEP § 2730	Adjustment for Appellate Review Delays in Patent TermMPEP 2730 Term Adjusted for Successful Appellate ReviewMPEP 2730Required Remand Is Final Decision Reversing Adverse Determination of PatentabilityMPEP 2730Required Request for Continued Examination Required After RemandMPEP 2730Prohibited Derivation Proceedings Replaced Interference ProceedingsMPEP 2730 Redesignation of Patent Appeals Board TitleMPEP 2730 Patent Trial and Appeal Board Title ChangedMPEP 2730 Derivation Proceedings Replaced InterferenceMPEP 2730 Patent Term Adjustment for Interference ProceedingsMPEP 2730 Patent Term Adjustment for Derivation ProceedingsMPEP 2730 Interference Replaced by Derivation Proceedings for Patent Term AdjustmentMPEP 2730 Derivation Proceedings Added to Patent Term Adjustment GuaranteesMPEP 2730 Board of Patent Appeals and Interferences Redesignated as Patent Trial and Appeal BoardMPEP 2730 Patent Term Adjustment for Secrecy OrdersMPEP 2730 Patent Term Adjustment for Successful Appellate ReviewMPEP 2730 Derivation Proceedings Replaced Interference ProceedingsMPEP 2730 Derivation Proceedings Added to Patent Term Adjustment for Office DelaysMPEP 2730 Board of Patent Appeals Redesignated as Patent Trial and Appeal BoardMPEP 2730 Amendments Reflecting Derivation Proceedings in Patent Term Adjustment RulesMPEP 2730 Redesignation of Patent Appeals Board TitleMPEP 2730 Patent Trial and Appeal Board Name UpdatedMPEP 2730
MPEP § 2731	Written Restriction Requirement Is a Notification Under 35 U.S.C. 132MPEP 2731 Written Restriction Requirement Is Notification Under 35 U.S.C. 132MPEP 2731 Requirement for Written Restriction NoticeMPEP 2731Required Written Restriction Requirement Is Not AppealableMPEP 2731 Requirement for Written Restriction Notification Under 35 U.S.C. 132MPEP 2731 Restriction Requirement Is a Notification Under 35 U.S.C. 132MPEP 2731Required Written Restriction Requirement Is a Notification Under 35 U.S.C. 132MPEP 2731 Written Restriction Requirement Is a Notice Under 35 U.S.C. 132MPEP 2731 Requirement for Two-Month Reply Period After Written RestrictionMPEP 2731 Written Restriction Requirement Is Not a Notice Under 132MPEP 2731 Patent Term Adjustment Due to Examination Delay After 3 YearsMPEP 2731 Limitations on Patent Term AdjustmentMPEP 2731 Patent Term Adjustment Excludes Certain Pendency PeriodsMPEP 2731Prohibited
MPEP § 2732	Appeal Brief Due Within Three MonthsMPEP 2732 Compliant Appeal Brief After Non-Compliant One Not Considered FailureMPEP 2732Permitted Period of Adjustment Reduced for Late Appeal BriefMPEP 2732Required

Related Provisions

Based on MPEP Last Modified: 10/30/2024 08:50:22

35 U.S.C. § 134 — Appeal to the Patent Trial and Appeal (MPEP Coverage Index) – BlueIron IP

35 U.S.C. § 134 Appeal to the Patent Trial and Appeal

Summary

Official MPEP § 134 — Appeal to the Patent Trial and Appeal

35 U.S.C. 134 Appeal to the Patent Trial and Appeal Board.

Verbatim in MPEP

Required Actions

Key Interpretations

Topics

MPEP Coverage

Related Provisions