35 U.S.C. § 145 — Civil action to obtain patent (MPEP Coverage Index) – BlueIron IP
35 U.S.C. § 145 Civil action to obtain patent
This page consolidates MPEP guidance interpreting 35 U.S.C. § 145, including 42 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
35 USC 145 provides patent applicants a legal mechanism to seek judicial review of USPTO patent application decisions by filing a civil action in federal district court after exhausting administrative appeal options.
What this section covers
- Legal pathway for patent applicants to challenge USPTO patent application decisions through judicial review.
- Procedural requirements for initiating a civil action against the USPTO regarding patent application rejections.
Key obligations
- Ensure all claims under rejection are comprehensively addressed before pursuing civil action.
- File the civil action within prescribed time limits after receiving a final USPTO decision.
- Comply with specific procedural requirements for initiating judicial review of patent application decisions.
Conditions and exceptions
- Understand the specific circumstances that qualify for civil action under 35 USC 145.
Practice notes
- Carefully document all prior administrative appeals before pursuing civil action.
- Consult with legal counsel experienced in patent law before filing a civil action.
Official MPEP § 145 — Civil action to obtain patent
Source: USPTOLast Modified: 10/30/2024 08:50:22
35 U.S.C. 145 Civil action to obtain patent.
[Editor Note: Applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note) ). See 35 U.S.C. 145 (pre‑AIA) for the law otherwise applicable.]
An applicant dissatisfied with the decision of the Patent Trial and Appeal Board in an appeal under section 134(a) may, unless appeal has been taken to the United States Court of Appeals for the Federal Circuit, have remedy by civil action against the Director in the United States District Court for the Eastern District of Virginia if commenced within such time after such decision, not less than sixty days, as the Director appoints. The court may adjudge that such applicant is entitled to receive a patent for his invention, as specified in any of his claims involved in the decision of the Patent Trial and Appeal Board, as the facts in the case may appear, and such adjudication shall authorize the Director to issue such patent on compliance with the requirements of law. All the expenses of the proceedings shall be paid by the applicant.
(Amended Apr. 2, 1982, Public Law 97-164, sec. 163(a)(7), 96 Stat. 49; Nov. 8, 1984, Public Law 98-622, sec. 203(b), 98 Stat. 3387; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-571, 582 (S. 1948 secs. 4605(e) and 4732(a)(10)(A) ); amended Sept. 16, 2011, Public Law 112-29, secs. 9 (effective Sept. 16, 2011), 20(j) (effective Sept. 16, 2012), and 3(j) (effective March 16, 2013), 125 Stat. 284.)
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