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

Page 64 TITLE 35—PATENTS § 141 declared after September 15, 2012, under section 135 of title 35, United States Code, as in effect before the ef- fective date under section 3(n) of the Leahy-Smith America Invents Act [Pub. L. 112—29, set out as a note under section 100 of this title]. The Patent Trial and Appeal Board may be deemed to be the Board of Patent Appeals and Interferences for purposes of such inter- ference proceedings.’’ Provisions of 35 U.S.C. 135, as in effect on the day be- fore the expiration of the 18-month period beginning on Sept. 16, 2011, apply to each claim of certain applica- tions for patent, and certain patents issued thereon, for which the amendments made by section 3 of Pub. L. 112–29 also apply, see section 3(n)(2) of Pub. L. 112–29, set out as an Effective Date of 2011 Amendment; Sav- ings Provisions note under section 100 of this title. CHAPTER 13—REVIEW OF PATENT AND TRADEMARK OFFICE DECISIONS Sec. 141. Appeal to Court of Appeals for the Federal Circuit. 142. Notice of appeal. 143. Proceedings on appeal. 144. Decision on appeal. 145. Civil action to obtain patent. 146. Civil action in case of derivation proceeding. Editorial Notes AMENDMENTS 2011—Pub. L. 112–29, § 3(j)(6), Sept. 16, 2011, 125 Stat. 291, amended item 146 generally, substituting ‘‘Civil ac- tion in case of derivation proceeding’’ for ‘‘Civil action in case of interference’’. 1982—Pub. L. 97–164, title I, § 163(b)(1), Apr. 2, 1982, 96 Stat. 49, substituted ‘‘Court of Appeals for the Federal Circuit’’ for ‘‘Court of Customs and Patent Appeals’’ in item 141. 1975—Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949, sub- stituted ‘‘PATENT AND TRADEMARK OFFICE’’ for ‘‘PATENT OFFICE’’ in chapter heading. § 141. Appeal to Court of Appeals for the Federal Circuit (a) EXAMINATIONS.—An applicant who is dissat- isfied with the final decision in an appeal to the Patent Trial and Appeal Board under section 134(a) may appeal the Board’s decision to the United States Court of Appeals for the Federal Circuit. By filing such an appeal, the applicant waives his or her right to proceed under section 145. (b) REEXAMINATIONS.—A patent owner who is dissatisfied with the final decision in an appeal of a reexamination to the Patent Trial and Ap- peal Board under section 134(b) may appeal the Board’s decision only to the United States Court of Appeals for the Federal Circuit. (c) POST-GRANT AND INTER PARTES REVIEWS.— A party to an inter partes review or a post-grant review who is dissatisfied with the final written decision of the Patent Trial and Appeal Board under section 318(a) or 328(a) (as the case may be) may appeal the Board’s decision only to the United States Court of Appeals for the Federal Circuit. (d) DERIVATION PROCEEDINGS.—A party to a derivation proceeding who is dissatisfied with the final decision of the Patent Trial and Appeal Board in the proceeding may appeal the decision to the United States Court of Appeals for the Federal Circuit, but such appeal shall be dis- missed if any adverse party to such derivation proceeding, within 20 days after the appellant has filed notice of appeal in accordance with sec- tion 142, files notice with the Director that the party elects to have all further proceedings con- ducted as provided in section 146. If the appel- lant does not, within 30 days after the filing of such notice by the adverse party, file a civil ac- tion under section 146, the Board’s decision shall govern the further proceedings in the case. (July 19, 1952, ch. 950, 66 Stat. 802; Pub. L. 97–164, title I, § 163(a)(7), (b)(2), Apr. 2, 1982, 96 Stat. 49, 50; Pub. L. 98–622, title II, § 203(a), Nov. 8, 1984, 98 Stat. 3387; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, §§ 4605(c), 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–571, 1501A–582; Pub. L. 107–273, div. C, title III, §§ 13106(c), 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1901, 1906; Pub. L. 112–29, § 7(c)(1), Sept. 16, 2011, 125 Stat. 314.) HISTORICAL AND REVISION NOTES Based on Title 35, U.S.C., 1946 ed., § 59a (R.S. 4911, amended (1) Mar. 2, 1927, ch. 273, § 8, 44 Stat. 1336, (2) Mar. 2, 1929, ch. 488, § 2a, 45 Stat. 1476, (3) Aug. 5, 1939, ch. 451, § 3, 53 Stat. 1212). Changes in language are made. Editorial Notes AMENDMENTS 2011—Pub. L. 112–29 amended section generally. Prior to amendment, section related to appeals to the Court of Appeals for the Federal Circuit. 2002—Pub. L. 107–273, § 13206(b)(1)(B), made technical correction to directory language of Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)]. See 1999 Amend- ment note below. Pub. L. 107–273, § 13106(c), inserted ‘‘, or a third-party requester in an inter partes reexamination proceeding, who is’’ after ‘‘patent owner’’ in third sentence. 1999—Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as amended by Pub. L. 107–273, § 13206(b)(1)(B), substituted ‘‘Director’’ for ‘‘Commis- sioner’’. Pub. L. 106–113, § 1000(a)(9) [title IV, § 4605(c)], inserted after second sentence ‘‘A patent owner in any reexam- ination proceeding dissatisfied with the final decision in an appeal to the Board of Patent Appeals and Inter- ferences under section 134 may appeal the decision only to the United States Court of Appeals for the Federal Circuit.’’ 1984—Pub. L. 98–622, § 203(a)(1)(A), substituted ‘‘in an appeal to the Board of Patent Appeals and Inter- ferences under section 134 of this title may appeal the decision’’ for ‘‘of the Board of Patent Appeals may ap- peal’’ in first sentence. Pub. L. 98–622, § 203(a)(1)(B), substituted ‘‘. By filing such an appeal the applicant waives his or her right’’ for ‘‘, thereby waiving his right’’ in first sentence. Pub. L. 98–622, § 203(a)(2)(A), substituted ‘‘Board of Patent Appeals and Interferences on the interference may appeal the decision’’ for ‘‘board of patent inter- ferences on the question of priority of appeal’’ in sec- ond sentence. Pub. L. 98–622, § 203(a)(2)(B), substituted ‘‘In accord- ance with’’ for ‘‘according to’’ in second sentence. Pub. L. 98–622, § 203(a)(2)(C), substituted ‘‘the party’’ for ‘‘he’’ in second sentence. Pub. L. 98–622, § 203(a)(3), reenacted last sentence with minor changes in wording. 1982—Pub. L. 97–164, § 163(b)(2), substituted ‘‘Court of Appeals for the Federal Circuit’’ for ‘‘Court of Customs and Patent Appeals’’ in section catchline. Pub. L. 97–164, § 163(a)(7), substituted ‘‘Court of Ap- peals for the Federal Circuit’’ for ‘‘Court of Customs and Patent Appeals’’ in two places. Page 65 TITLE 35—PATENTS § 143 Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2011 AMENDMENT Amendment by Pub. L. 112–29 effective upon the expi- ration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, with certain exceptions, see section 7(e) of Pub. L. 112–29, set out as a note under section 6 of this title. EFFECTIVE DATE OF 2002 AMENDMENT Amendment by section 13106(c) of Pub. L. 107–273 ap- plicable with respect to any reexamination proceeding commenced on or after Nov. 2, 2002, see section 13106(d) of Pub. L. 107–273, set out as a note under section 134 of this title. EFFECTIVE DATE OF 1999 AMENDMENT Amendment by section 1000(a)(9) [title IV, § 4605(c)] of Pub. L. 106–113 applicable to any reexamination filed in the United States Patent and Trademark Office on or after Nov. 2, 2002, see section 13202(d) of Pub. L. 107–273, set out as a note under section 134 of this title. Amendment by section 1000(a)(9) [title IV, § 4605(c)] of Pub. L. 106–113 effective Nov. 29, 1999, and applicable to any patent issuing from an original application filed in the United States on or after that date, see section 1000(a)(9) [title IV, § 4608(a)] of Pub. L. 106–113, set out as a note under section 41 of this title. Amendment by section 1000(a)(9) [title IV, § 4732(a)(10)(A)] of Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of this title. EFFECTIVE DATE OF 1984 AMENDMENT Amendment by Pub. L. 98–622 effective three months after Nov. 8, 1984, see section 207 of Pub. L. 98–622, set out as a note under section 41 of this title. EFFECTIVE DATE OF 1982 AMENDMENT Amendment by Pub. L. 97–164 effective Oct. 1, 1982, see section 402 of Pub. L. 97–164, set out as a note under section 171 of Title 28, Judiciary and Judicial Proce- dure. § 142. Notice of appeal When an appeal is taken to the United States Court of Appeals for the Federal Circuit, the ap- pellant 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. (July 19, 1952, ch. 950, 66 Stat. 802; Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 97–164, title I, § 163(a)(7), Apr. 2, 1982, 96 Stat. 49; Pub. L. 98–620, title IV, § 414(a), Nov. 8, 1984, 98 Stat. 3362; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–582; Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906.) HISTORICAL AND REVISION NOTES Based on Title 35, U.S.C., 1946 ed., § 60 (R.S. 4912, amended (1) Mar. 2, 1927, ch. 273, § 9, 44 Stat. 1336, (2) Mar. 2, 1929, ch. 488, § 2(b), 45 Stat. 1476). Changes in language are made. Editorial Notes AMENDMENTS 2002—Pub. L. 107–273 made technical correction to di- rectory language of Pub. L. 106–113. See 1999 Amend- ment note below. 1999—Pub. L. 106–113, as amended by Pub. L. 107–273, substituted ‘‘Director’’ for ‘‘Commissioner’’ in two places. 1984—Pub. L. 98–620 amended section generally, sub- stituting ‘‘the appellant shall file in the Patent and Trademark Office a written notice of appeal directed to the Commissioner, within such time after the date of the decision from which the appeal is taken as the Commissioner prescribes, but in no case less than 60 days after that date’’ for ‘‘the appellant shall give no- tice thereof to the Commissioner, and shall file in the Patent and Trademark Office his reasons of appeal, spe- cifically set forth in writing, within such time after the date of the decision appealed from, not less than sixty days, as the Commissioner appoints’’. 1982—Pub. L. 97–164 substituted ‘‘Court of Appeals for the Federal Circuit’’ for ‘‘Court of Customs and Patent Appeals’’. 1975—Pub. L. 93–596 substituted ‘‘Patent and Trade- mark Office’’ for ‘‘Patent Office’’. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 1999 AMENDMENT Amendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of this title. EFFECTIVE DATE OF 1984 AMENDMENT Pub. L. 98–620, title IV, § 414(c), Nov. 8, 1984, 98 Stat. 3364, provided that: ‘‘The amendments made by this section [amending this section, sections 143 and 144 of this title, and section 1071 of Title 15, Commerce and Trade] shall apply to proceedings pending in the Patent and Trademark Office on the date of the enactment of this Act [Nov. 8, 1984] and to appeals pending in the United States Court of Appeals for the Federal Circuit on such date.’’ EFFECTIVE DATE OF 1982 AMENDMENT Amendment by Pub. L. 97–164 effective Oct. 1, 1982, see section 402 of Pub. L. 97–164, set out as a note under section 171 of Title 28, Judiciary and Judicial Proce- dure. EFFECTIVE DATE OF 1975 AMENDMENT Amendment by Pub. L. 93–596 effective Jan. 2, 1975, see section 4 of Pub. L. 93–596, set out as a note under section 1111 of Title 15, Commerce and Trade. § 143. Proceedings on appeal With respect to an appeal described in section 142, 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 pendency of the appeal. In an ex parte case, the Director shall submit to the court in writing the grounds for the decision of the Pat- ent and Trademark Office, addressing all of the issues raised in the appeal. The Director shall have the right to intervene in an appeal from a decision entered by the Patent Trial and Appeal Board in a derivation proceeding under section 135 or in an inter partes or post-grant review under chapter 31 or 32. The court shall, before hearing an appeal, give notice of the time and place of the hearing to the Director and the par- ties in the appeal. (July 19, 1952, ch. 950, 66 Stat. 802; Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 97–164, title I, § 163(a)(7), Apr. 2, 1982, 96 Stat. 49; Pub. L.