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1216.01 Appeals to the Federal Circuit - 1200 Appeal
1216.01 Appeals to the Federal Circuit
35 U.S.C. 142 Notice of appeal.
When an appeal is taken to the United States Court of Appeals for the Federal Circuit, the appellant shall file in the Patent and Trademark Office a written notice of appeal directed to the Director, within such time after the date of the decision from which the appeal is taken as the Director prescribes, but in no case less than 60 days after that date.
35 U.S.C. 143 Proceedings on appeal.
With respect to an appeal described in section 142 of this title, the Director shall transmit to the United States Court of Appeals for the Federal Circuit a certified list of the documents comprising the record in the Patent and Trademark Office. The court may request that the Director forward the original or certified copies of such documents during the pendency of the appeal. In any reexamination case, the Director shall submit to the court in writing the grounds for the decision of the Patent and Trademark Office, addressing all the issues involved in the appeal. The court shall, before hearing an appeal, give notice of the time and place of the hearing to the Director and the parties in the appeal.
35 U.S.C. 144 Decision on appeal.
The United States Court of Appeals for the Federal Circuit shall review the decision from which an appeal is taken on the record before the Patent and Trademark Office. Upon its determination the court shall issue to the Director its mandate and opinion, which shall be entered of record in the Patent and Trademark Office and shall govern the further proceedings in the case.
37 CFR 1.302 Notice of appeal.
(a) When an appeal is taken to the U.S. Court of Appeals for the Federal Circuit, the appellant shall give notice thereof to the Commissioner within the time specified in § 1.304.
(b) In interferences, the notice must be served as provided in § 1.646.
(c) A notice of appeal, if mailed to the Office, shall be addressed as follows: Box 8, Commissioner of Patents and Trademarks, Washington, DC 20231.
Filing an appeal to the Federal Circuit requires that the applicant, the owner of a patent involved in a reexamination proceeding, or a party to an interference proceeding: (A) file in the U.S. Patent and Trademark Office a written notice of appeal ( 35 U.S.C. 142) directed to the Commissioner and (B) file with the Clerk of the Federal Circuit a copy of the notice of appeal and pay the docket fee for the appeal, as provided by Federal Circuit Rule 52. 37 CFR 1.301.
For a notice of appeal to be considered timely filed in the U.S. Patent and Trademark Office, it must: (A) actually reach the U.S. Patent and Trademark Office within the time specified in 37 CFR 1.304 (including any extensions) or (B) be mailed within the time specified in 37 CFR 1.304 (including any extensions) by "Express Mail" in accordance with 37 CFR 1.10.
A Notice of Appeal to the Federal Circuit should not be mailed to the Commissioner, the Board or the examiner. Nor should it be mailed to the Solicitor's mail service address for court papers given in MPEP § 1216. Instead, it should be filed in the U.S. Patent and Trademark Office in any one of the following ways:
(A) By mail addressed as follows, in which case the notice of appeal must actually reach the U.S. Patent and Trademark Office by the due date:
Commissioner of Patents and Trademarks
Box 8
Washington, DC 20231
Attention: Office of the Solicitor
(B) By "Express Mail" (U.S. Postal Service only) under 37 CFR 1.10 addressed as follows, in which case the notice of appeal is deemed filed on the "date-in" on the "Express Mail" mailing label:
Commissioner of Patents and Trademarks
Box 8
Washington, DC 20231
Attention: Office of the Solicitor
(C) By hand to the Office of the Solicitor, 2121 Crystal Drive, Suite 714, Arlington, VA 22202.
A copy of the notice of appeal and the docket fee should be filed with the Clerk of the Federal Circuit, whose mailing and actual address is:
U.S. Court of Appeals for the Federal Circuit
717 Madison Place, N.W.
Washington, DC 20439
The Solicitor, prior to a decision by the Federal Circuit, may request that the case be remanded to the U.S. Patent and Trademark Office and prosecution reopened. See MPEP § 1214.07.
STANDARDS OF REVIEW BY THE FEDERAL CIRCUIT
In light of the Supreme Court decision in Dickinson v. Zurko, 527 U.S. 150, 50 USPQ2d 1930 (1999), holding that the Federal Circuit must apply one of the standards set forth in the Administrative Procedure Act ("APA"), the Federal Circuit adopted the "substantial evidence" standard for reviewing factfinding by the Board of Patent Appeals and Interferences. In re Gartside, 203 F.3d 1305, 53 USPQ2d 1769 (Fed. Cir. 2000). The "substantial evidence" standard asks whether the agency action, findings, and conclusions were supported by substantial evidence, or, in other words, whether a reasonable factfinder could have arrived at the agency's decision. The Supreme Court has described "substantial evidence" as "more than a mere scintilla. It means such relevant evidence as a reasonable mind might accept as adequate to support a conclusion. . . . Mere uncorroborated hearsay or rumor does not constitute substantial evidence." Consolidated Edison Co. v. NLRB, 305 U.S. 197, 229-30 (1938)(citations omitted).
The Federal Circuit uses the de novo standard for reviewing questions of law. See e.g., In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1455 (Fed. Cir. 1998).
When the issue to be decided is a question of law based on underlying findings of fact (e.g., obviousness under 35 U.S.C. 103, enablement under 35 U.S.C. 112, first paragraph, or conception of an invention for purposes of 35 U.S.C. 102(g)), the Board's legal conclusion is reviewed without formal deference, while the subsidiary factual findings are reviewed for substantial evidence.
OFFICE PROCEDURE FOLLOWING DECISION BY THE FEDERAL CIRCUIT
After the Federal Circuit has heard and decided the appeal, an uncertified copy of the decision is sent to the U.S. Patent and Trademark Office and to the appellant and appellee (if any).
In due course, the Clerk of the Federal Circuit forwards to the U.S. Patent and Trademark Office a certified copy of the court's decision. This certified copy is known as the "mandate." The mandate is entered in the file of the application, reexamination or interference which was the subject of the appeal. The date of receipt of the mandate by the U.S. Patent and Trademark Office marks the conclusion of the appeal, i.e., the termination of proceedings as that term is used in 35 U.S.C. 120. See 37 CFR 1.197(c), or "termination of the interference" as that term is used in 35 U.S.C. 135(c).
The Federal Circuit's opinion may or may not be precedential. Whether or not the opinion is precedential, the U.S. Patent and Trademark Office will not give the public access to the administrative record of an involved application, or to the file of an interference, unless it is otherwise available to the public under 37 CFR 1.11. However, since the court record in a 35 U.S.C. 141 appeal generally includes a copy of at least part of the application, such may be inspected at the Federal Circuit. In re Mosher, 248 F.2d 956, 115 USPQ 140 (CCPA 1957).
In an ex parte appeal, after the mandate is entered in the application or reexamination file, the file is then returned to the appropriate U.S. Patent and Trademark Office official for further proceedings consistent with the mandate. See MPEP § 1214.06 for handling of claims dependent on rejected claims.
A. All Claims Rejected
If all claims in the case stand rejected, proceedings in the case are considered terminated on the date of receipt of the Federal Circuit's mandate. Because the case is no longer considered pending, it is ordinarily not open to subsequent amendment and prosecution by the applicant. Continental Can Company v. Schuyler, 326 F. Supp. 283, 168 USPQ 625 (D.D.C. 1970). However, exceptions may occur where the mandate clearly indicates that further action in the U.S. Patent and Trademark Office is to be taken in accordance with the Federal Circuit's opinion.
B. Some Claims Allowed
Where the case includes one or more allowed claims, including claims allowed by the examiner prior to appeal and claims whose rejections were reversed by either the Board or the court, the proceedings are considered terminated only as to any claims which still stand rejected. It is not necessary for the applicant or patent owner to cancel the rejected claims, since they may be canceled by the examiner in an examiner's amendment or by an appropriate notation in the margin of the claims, to avoid confusion to the printer. Thus, if no formal matters remain to be attended to, the examiner will pass the application to issue forthwith on the allowed claims or, in the case of a reexamination, will issue a "Notice of Intent to Issue a Reexamination Certificate and/or Examiner's Amendment." See MPEP § 2287. The examiner should set forth the reasons for allowance, referring to and incorporating a copy of the appellate brief and the court decision. See MPEP § 1302.14.
If formal matters remain to be attended to, the examiner promptly should take appropriate action on such matters, such as by an examiner's amendment or by an Office action setting a 1-month (but not less than 30-day) shortened statutory period for reply. However, the application or reexamination proceeding is considered closed to further prosecution except as to such matters.
C. Remand
Where the decision of the court brings up for action on the merits claims which were not previously considered on the merits (such as a decision reversing a rejection of generic claims in an application containing claims to nonelected species), the examiner will take the case up for appropriate action on the matters thus brought up.
D. Reopening of Prosecution
In rare situations it may be necessary to reopen prosecution of an application after a decision by the Federal Circuit. Any Office action proposing to reopen prosecution after a decision by the Federal Circuit must be forwarded to the Office of the Deputy Commissioner for Patent Examination Policy for written approval, which will be indicated on the Office action.
DISMISSAL OF APPEAL
After an appeal is docketed in the Federal Circuit, failure to prosecute the appeal, such as by appellant's failure to file a brief, may result in dismissal of the appeal by the court. Under particular circumstances, the appeal also may be dismissed by the court on motion of the appellant and/or the Commissioner.
The court proceedings are considered terminated as of the date of the mandate. After dismissal, the action taken by the examiner will be the same as set forth above under the heading "Office Procedure Following Decision by the Federal Circuit."
In the event of a dismissal for a reason other than failure to prosecute the appeal, the status of the application, reexamination proceeding or interference must be determined according to the circumstances leading to the dismissal.
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