Uspto Issues Final Rules Governing Inter Partes Reexamination

Effective January 21, 2004, an inter partes reexamination third party requester has the right to appeal an adverse decision of the Board of Patent Appeals and Interferences (BPAI) to the U.S. Court of Appeals for the Federal Circuit (CAFC). (35 U.S.C. § 315(b)(1)). Also, the patent owner may be a party to an appeal taken by a third party requester and a third party requester may be a party to an appeal taken by the patent owner. (35 U.S.C. § 315(b)(2)).

Analysis of Rules Promulgated Relating to Inter Partes Reexamination Appeal

Rule 1.983(a) provides that "[t]he patent owner or third party requester in an inter partes reexamination proceeding who is a party to an appeal to the [BPAI] and who is dissatisfied with the decision of the [BPAI] may….appeal to the [CAFC]." Moreover, the patent owner or third party requester "may be a party to any appeal thereto taken from a reexamination decision of the [BPAI]."

1. Appellant must file notice of an appeal by two months of the date of the decision by the BPAI to the Director and to the Federal Circuit. (Rules 1.983(b)(1), 1.302(d), 1.304(a)(1)).
2. Appellant must file a copy of the notice of appeal and pay the requisite fee as provided for in the rules of the Federal Circuit. (Rule 1.983(b)(2)).
3. Appellant must serve a copy of the notice on every other party in the reexamination proceeding. (Rule 1.983(b)(3)).

After an appeal has been filed by the third party requester or the patent owner, the other party may file a cross appeal. Rule 1.983(c) covers cross appeals by third parties. Rule 1.983(d) covers cross appeals by the patent owner. The cross appeal must be filed within 14 days of service of the opposing party’s notice of appeal to the Federal Circuit or two months after the date of the decision of the BPAI, whichever is later.

Absent a cross appeal, the third party or patent owner may simply elect to participate in the appellant’s appeal in order to provide an argument supporting the decision of the BPAI. Rule 1.983(e) provides that a party may elect to participate in an appellant’s appeal within 14 days of service of notice of the appeal or service of notice of a cross appeal. The electing party must timely file a written notice electing to participate in the appellant’s appeal to the Federal Circuit. Rule 1.983(e)(1). Also, the electing party must timely file a copy of the notice at the Federal Circuit, and serve a copy of the notice on every other party in the reexamination proceedings. Rules 1.983(e)(2) and (3).

For a timely filed notice of appeal to be accepted by the Director, the appeal fee must be paid; the appealed claims must be identified; and the notice must be signed by the patent owner, third party requester, or their representative. Rules 1.959(a) through (c). If there is an "inadvertent" failure to comply with any of these requirements, the appellant will be notified and provided a non-extendable one-month period to comply.

In any reexamination proceedings commenced prior to November 2, 2002, the third party requester is precluded from appealing in any manner a decision of the BPAI, and is precluded from participating in any appeal to the Federal Circuit taken by the patent owner.

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