35 U.S.C. § 141 — Appeal to Court of Appeals for the Federal (MPEP Coverage Index) – BlueIron IP

This page consolidates MPEP guidance interpreting 35 U.S.C. § 141, 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

The Appeal to Court of Appeals for the Federal provides patent applicants a judicial review mechanism to challenge USPTO patent examination decisions by filing a civil action in the Federal Circuit after exhausting administrative appeal options.

What this section covers

Outline the judicial review process for patent applicants challenging USPTO patent examination decisions.
Define procedural steps for initiating an appeal to the Federal Circuit after completing USPTO administrative appeals.

Key obligations

Ensure all claims under rejection are properly addressed in the appeal filing as presumed under USPTO regulations.
File the appeal within the prescribed timeframe after receiving a final USPTO decision.
Comply with specific procedural requirements for initiating a civil action in the Federal Circuit.

Conditions and exceptions

Understand that not all claims may be appealable and some may require specific amendment or cancellation.

Practice notes

Carefully review and preserve all arguments and evidence developed during USPTO examination for potential Federal Circuit review.
Consult with legal counsel experienced in patent appellate litigation to assess the strategic merits of pursuing a Federal Circuit appeal.

Civil Action Under 35 U.S.C. 145 Can Be Dismissed Without Prejudice to ProposalsMPEP 1214.07
Notice of Appeal Must Be Filed With DirectorMPEP 1216Required
Copy Must Be Filed with Patent Trial and Appeal BoardMPEP 1216Required
Adverse Party Can Choose Further Review Under 35 U.S.C. 146 After Federal Circuit AppealMPEP 1216Permitted
Federal Circuit Opinion May Not Be PrecedentialMPEP 1216.01Prohibited
Petition To Reopen Case When Board Decision Is Based On Overruled PrecedentMPEP 1214.07Permitted
Proposed Amendments and Evidence to be Entered on RemandMPEP 1214.07Permitted
Notice of Appeal Required for Ex Parte Reexamination AppealsMPEP 1216Required
Notice of Appeal Must Provide Sufficient Information for Director to Determine Intervention RightMPEP 1216Required
Adjustment for Appellate Review Delays in Patent TermMPEP 2730
Remand Is Final Decision Reversing Adverse Determination of PatentabilityMPEP 2730Required
Request for Continued Examination Required After RemandMPEP 2730Prohibited
Petition to Reopen Cases After Board DecisionMPEP 1214.07Permitted
Petitions Not Entertained After Director’s Brief in Review CasesMPEP 1214.07
Petition Grant Requires Remand to USPTO for Consideration of AmendmentsMPEP 1214.07
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
Appeals from Inter Partes Reviews Must Go to Federal CircuitMPEP 1216Permitted
Notice of Election to Conduct Further Proceedings as Provided in Section 146MPEP 1216Required
Appellant Must File Civil Action Within 30 DaysMPEP 1216Required
Requirements for Filing an Appeal to the Federal CircuitMPEP 1216Required
Requirement for Notice of Election Under 146MPEP 1216Required
Adverse Party Must File Notice to Proceed Under 35 U.S.C. 146MPEP 1216Required
Copy of Notice of Election Must Be Filed with PTABMPEP 1216Required
Copy of Notice of Election Must Be Served Where NecessaryMPEP 1216Required
Appeal to Federal Circuit for Ex Parte ReexaminationMPEP 1216Permitted
Appeal or Civil Action for Derivation DecisionMPEP 1216Permitted
Notice of Election Required for Federal Circuit AppealMPEP 1216.01Required
Notice of Election Must Be Filed With BoardMPEP 1216.01Required
Public Can Inspect Application During Federal Circuit AppealMPEP 1216.01Permitted
References to 35 U.S.C. 102 and 135MPEP 2301.02
Statute Applicable to Involved Application or PatentMPEP 2301.02
Term Adjusted for Successful Appellate ReviewMPEP 2730Required
Period of Adjustment for Patent Term Due to Examination DelayMPEP 2730
Patent Term Not Adjusted for PTAB JurisdictionMPEP 2730
Period of Adjustment for Patent Term Due to Examination DelayMPEP 2731
Period for Patent Term Adjustment After Final DecisionMPEP 2731
Period of Adjustment for Patent Term Due to Examination DelayMPEP 2731

Notice of Appeal Must Be Filed With DirectorMPEP 1216Required
Copy Must Be Filed with Patent Trial and Appeal BoardMPEP 1216Required
Notice of Appeal Required for Ex Parte Reexamination AppealsMPEP 1216Required
Notice of Appeal Must Provide Sufficient Information for Director to Determine Intervention RightMPEP 1216Required
Remand Is Final Decision Reversing Adverse Determination of PatentabilityMPEP 2730Required
Brief Must Address All RejectionsMPEP 1205.02Required
Notice of Election to Conduct Further Proceedings as Provided in Section 146MPEP 1216Required
Appellant Must File Civil Action Within 30 DaysMPEP 1216Required
Requirements for Filing an Appeal to the Federal CircuitMPEP 1216Required
Requirement for Notice of Election Under 146MPEP 1216Required
Adverse Party Must File Notice to Proceed Under 35 U.S.C. 146MPEP 1216Required
Copy of Notice of Election Must Be Filed with PTABMPEP 1216Required
Copy of Notice of Election Must Be Served Where NecessaryMPEP 1216Required
Notice of Election Required for Federal Circuit AppealMPEP 1216.01Required
Notice of Election Must Be Filed With BoardMPEP 1216.01Required
Term Adjusted for Successful Appellate ReviewMPEP 2730Required

63-Day Time Limit for Filing Appeal to Federal CircuitMPEP 1216
Single Rehearing for SNQ and Merits DecisionsMPEP 2274Permitted
Direct Review Prevents Harassment of Patentees Through Duplicative ExaminationMPEP 2274Prohibited
Termination Date of Civil Action Can Be Found at Office of the SolicitorMPEP 1216.02Permitted
Single Rehearing for SNQ and Merits DecisionsMPEP 2274
Reexamination Appeal to Federal Circuit After September 16, 2012MPEP 2279
PTA for Appellate Review DelaysMPEP 2730
All Rejected Claims Presumed AppealedMPEP 1204
Waiver of Unargued Claim Rejections on AppealMPEP 1204
Claims Must Be Appealed ExplicitlyMPEP 1204
Waiver of Appeal Challenges Results in Jurisdictional IssuesMPEP 1204Recommended
Summary Affirmation of Nonstatutory Double Patenting RejectionsMPEP 1204Permitted
Address All Examiner Rejections in Appeal BriefMPEP 1205.02Permitted
Address All Rejection Grounds in Appeal BriefMPEP 1205.02Recommended
Applicant Can Seek Judicial Review By Appeal Or Civil ActionMPEP 1216Permitted
Waive Civil Action by Filing Appeal to Federal CircuitMPEP 1216
Appeal to Federal Circuit for IPR, PGR, and CBM DecisionsMPEP 1216Permitted
63 Days for Appeal or Civil Action After Board DecisionMPEP 1216
Time for Filing Notice of Appeal After RehearingMPEP 1216
Final Disposition Required After Civil ActionMPEP 1216.02
Procedures After District Court Decision Same as 35 U.S.C. 141 AppealsMPEP 1216.02
Final Board Decision Directly Appealable to Federal CircuitMPEP 2274
Patent Owner Appeal to Federal Circuit OnlyMPEP 2279Permitted
Appeal of Reexamination Decisions Filed After November 29, 1999MPEP 2279
Reexamination Appeal Must Go to Federal CircuitMPEP 2279
Patent Term Adjustment for Appellate ReviewMPEP 2730

MPEP Section	Rules
MPEP § 1204	All Rejected Claims Presumed AppealedMPEP 1204 Waiver of Unargued Claim Rejections on AppealMPEP 1204 Claims Must Be Appealed ExplicitlyMPEP 1204 Waiver of Appeal Challenges Results in Jurisdictional IssuesMPEP 1204Recommended Summary Affirmation of Nonstatutory Double Patenting RejectionsMPEP 1204Permitted
MPEP § 1205.02	Brief Must Address All RejectionsMPEP 1205.02Required Address All Examiner Rejections in Appeal BriefMPEP 1205.02Permitted Address All Rejection Grounds in Appeal BriefMPEP 1205.02Recommended
MPEP § 1214.07	Civil Action Under 35 U.S.C. 145 Can Be Dismissed Without Prejudice to ProposalsMPEP 1214.07 Petition To Reopen Case When Board Decision Is Based On Overruled PrecedentMPEP 1214.07Permitted Proposed Amendments and Evidence to be Entered on RemandMPEP 1214.07Permitted Petition to Reopen Cases After Board DecisionMPEP 1214.07Permitted Petitions Not Entertained After Director’s Brief in Review CasesMPEP 1214.07 Petition Grant Requires Remand to USPTO for Consideration of AmendmentsMPEP 1214.07
MPEP § 1216	Notice of Appeal Must Be Filed With DirectorMPEP 1216Required Copy Must Be Filed with Patent Trial and Appeal BoardMPEP 1216Required Adverse Party Can Choose Further Review Under 35 U.S.C. 146 After Federal Circuit AppealMPEP 1216Permitted 63-Day Time Limit for Filing Appeal to Federal CircuitMPEP 1216 Notice of Appeal Required for Ex Parte Reexamination AppealsMPEP 1216Required Notice of Appeal Must Provide Sufficient Information for Director to Determine Intervention RightMPEP 1216Required 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 Appeals from Inter Partes Reviews Must Go to Federal CircuitMPEP 1216Permitted Notice of Election to Conduct Further Proceedings as Provided in Section 146MPEP 1216Required Appellant Must File Civil Action Within 30 DaysMPEP 1216Required Requirements for Filing an Appeal to the Federal CircuitMPEP 1216Required Requirement for Notice of Election Under 146MPEP 1216Required Adverse Party Must File Notice to Proceed Under 35 U.S.C. 146MPEP 1216Required Copy of Notice of Election Must Be Filed with PTABMPEP 1216Required Copy of Notice of Election Must Be Served Where NecessaryMPEP 1216Required Applicant Can Seek Judicial Review By Appeal Or Civil ActionMPEP 1216Permitted Waive Civil Action by Filing Appeal to Federal CircuitMPEP 1216 Appeal to Federal Circuit for Ex Parte ReexaminationMPEP 1216Permitted Appeal to Federal Circuit for IPR, PGR, and CBM DecisionsMPEP 1216Permitted Appeal or Civil Action for Derivation DecisionMPEP 1216Permitted 63 Days for Appeal or Civil Action After Board DecisionMPEP 1216 Time for Filing Notice of Appeal After RehearingMPEP 1216
MPEP § 1216.01	Federal Circuit Opinion May Not Be PrecedentialMPEP 1216.01Prohibited Notice of Election Required for Federal Circuit AppealMPEP 1216.01Required Notice of Election Must Be Filed With BoardMPEP 1216.01Required Public Can Inspect Application During Federal Circuit AppealMPEP 1216.01Permitted
MPEP § 1216.02	Termination Date of Civil Action Can Be Found at Office of the SolicitorMPEP 1216.02Permitted Final Disposition Required After Civil ActionMPEP 1216.02 Procedures After District Court Decision Same as 35 U.S.C. 141 AppealsMPEP 1216.02
MPEP § 2274	Single Rehearing for SNQ and Merits DecisionsMPEP 2274Permitted Direct Review Prevents Harassment of Patentees Through Duplicative ExaminationMPEP 2274Prohibited Single Rehearing for SNQ and Merits DecisionsMPEP 2274 Final Board Decision Directly Appealable to Federal CircuitMPEP 2274
MPEP § 2279	Reexamination Appeal to Federal Circuit After September 16, 2012MPEP 2279 Patent Owner Appeal to Federal Circuit OnlyMPEP 2279Permitted Appeal of Reexamination Decisions Filed After November 29, 1999MPEP 2279 Reexamination Appeal Must Go to Federal CircuitMPEP 2279
MPEP § 2301.02	References to 35 U.S.C. 102 and 135MPEP 2301.02 Statute Applicable to Involved Application or PatentMPEP 2301.02
MPEP § 2730	Adjustment for Appellate Review Delays in Patent TermMPEP 2730 Remand Is Final Decision Reversing Adverse Determination of PatentabilityMPEP 2730Required Request for Continued Examination Required After RemandMPEP 2730Prohibited PTA for Appellate Review DelaysMPEP 2730 Term Adjusted for Successful Appellate ReviewMPEP 2730Required Period of Adjustment for Patent Term Due to Examination DelayMPEP 2730 Patent Term Adjustment for Appellate ReviewMPEP 2730 Patent Term Not Adjusted for PTAB JurisdictionMPEP 2730
MPEP § 2731	Period of Adjustment for Patent Term Due to Examination DelayMPEP 2731 Period for Patent Term Adjustment After Final DecisionMPEP 2731 Period of Adjustment for Patent Term Due to Examination DelayMPEP 2731

Related Provisions

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

35 U.S.C. § 141 — Appeal to Court of Appeals for the Federal (MPEP Coverage Index) – BlueIron IP

35 U.S.C. § 141 Appeal to Court of Appeals for the Federal

Summary

Official MPEP § 141 — Appeal to Court of Appeals for the Federal

35 U.S.C. 141 Appeal to Court of Appeals for the Federal Circuit.

Verbatim in MPEP

Required Actions

Key Interpretations

Topics

MPEP Coverage

Related Provisions