What happens if my petition to the USPTO Director is denied?
If your petition to the USPTO Director is denied, you generally have the following options: File a request for reconsideration: You may be able to file a request for reconsideration of the decision, providing additional evidence or arguments. File a new petition: In some cases, you may be able to file a new petition addressing…
Read MoreWhat happens if a request for rehearing is filed?
When a request for rehearing is filed, several important processes are set in motion. According to MPEP 1214.03: The Board will render a decision on the request for rehearing. The decision on the request for rehearing is deemed to incorporate the earlier opinion reflecting its decision for appeal, except for portions specifically withdrawn on rehearing.…
Read MoreHow can a patent owner seek judicial review of an ex parte reexamination decision?
According to MPEP 1216, a patent owner dissatisfied with the final written decision of the Patent Trial and Appeal Board (PTAB) in an ex parte reexamination has only one option for judicial review: “A patent owner who is not satisfied with the final written decision of the Board in an ex parte reexamination may seek…
Read MoreCan new evidence be introduced in a civil action under 35 U.S.C. 145?
Yes, new evidence can be introduced in a civil action under 35 U.S.C. 145. This is one of the key differences between a civil action and an appeal to the Federal Circuit. The MPEP 1216 states: “In an appeal to the Federal Circuit, the record is limited to the record developed before the Board. In…
Read MoreWhat options does an applicant have for judicial review of a Patent Trial and Appeal Board decision?
An applicant dissatisfied with a final written decision of the Patent Trial and Appeal Board (PTAB) has two options for judicial review: Appeal to the U.S. Court of Appeals for the Federal Circuit under 35 U.S.C. 141 File a civil action in the U.S. District Court for the Eastern District of Virginia under 35 U.S.C.…
Read MoreCan a remand by the Board be appealed?
No, a remand by the Board of Patent Appeals and Interferences (BPAI) cannot be appealed. MPEP 1211 clearly states: “As specified by 37 CFR 41.50(e), a remand by the Board is not appealable (i.e. not final for purposes of judicial review).” This means that when the Board issues a remand, the decision is not considered…
Read MoreCan I appeal a PTAB decision directly to a district court?
No, you cannot appeal a Patent Trial and Appeal Board (PTAB) decision directly to a district court. The proper avenue for judicial review of PTAB decisions is through the U.S. Court of Appeals for the Federal Circuit. Here’s why: The Federal Circuit has exclusive jurisdiction over appeals from PTAB decisions. District courts do not have…
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