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 Patent 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 parties in the appeal.
July 19, 1952, ch. 95066 Stat. 802Pub. L. 93–596, § 188 Stat. 1949Pub. L. 97–164, title I, § 163(a)(7)96 Stat. 49Pub. L. 98–620, title IV, § 414(a)98 Stat. 3363Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, §§ 4605(d), 4732(a)(10)(A)]113 Stat. 1536Pub. L. 107–273, div. C, title III116 Stat. 1901Pub. L. 112–29125 Stat. 314(, ; , , ; , , ; , , ; , , , 1501A–571, 1501A–582; , §§ 13202(b)(2), 13206(b)(1)(B), , , 1906; , §§ 7(c)(3), 20(j), , , 335.)
Historical and Revision Notes
Mar. 2, 1927, ch. 273, § 1044 Stat. 1336Based on Title 35, U.S.C., 1946 ed., § 61 (R.S. 4913, amended , ).
Language is changed. The requirement that the Commissioner notify the parties is omitted and a requirement that the court notify the parties is added. The statement relating to filing the papers and testimony is made more explicit.
Editorial Notes
Amendments
Pub. L. 112–29, § 20(j)2011—, struck out “of this title” after “142”.
Pub. L. 112–29, § 7(c)(3), substituted “In an ex parte case, the Director shall submit to the court in writing the grounds for the decision of the Patent 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.” for “In an ex parte case or 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.” and struck out second occurrence of “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.” at the end.
Pub. L. 107–273, § 13206(b)(1)(B)Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)]2002—, made technical correction to directory language of . See 1999 Amendment note below.
Pub. L. 107–273, § 13202(b)(2), amended third sentence generally and added fourth sentence identical to existing fourth (now fifth) sentence. Prior to amendment, third sentence read as follows: “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.”
Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)]Pub. L. 107–273, § 13206(b)(1)(B)1999—, as amended by , substituted “Director” for “Commissioner” the first, second, and fourth places appearing.
Pub. L. 106–113, § 1000(a)(9) [title IV, § 4605(d)], amended third sentence generally. Prior to amendment, third sentence read as follows: “In an ex parte case, the Commissioner 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.”
Pub. L. 98–620section 142 of this title1984— substituted provisions requiring the Commissioner to transmit to the court a certified list of the documents comprising the record in the Patent and Trademark Office, with respect to an appeal described in , for provision which required the Commissioner to transmit to the court certified copies of all the necessary original papers and evidence in the case specified by the appellant and the appellee, and inserted provision that the court may request that the Commissioner forward the original or certified copies of such documents during the pendency of the appeal.
Pub. L. 97–1641982— substituted “Court of Appeals for the Federal Circuit” for “Court of Customs and Patent Appeals”.
Pub. L. 93–5961975— substituted “Patent and Trademark Office” for “Patent Office”.
Statutory Notes and Related Subsidiaries
Effective Date of 2011 Amendment
section 7(c)(3) of Pub. L. 112–29section 7(e) of Pub. L. 112–29section 6 of this titleAmendment by effective upon the expiration of the 1-year period beginning on , and applicable to proceedings commenced on or after that effective date, with certain exceptions, see , set out as a note under .
section 20(j) of Pub. L. 112–29lPub. L. 112–29section 2 of this titleAmendment by effective upon the expiration of the 1-year period beginning on , and applicable to proceedings commenced on or after that effective date, see section 20() of , set out as a note under .
Effective Date of 1999 Amendment
Pub. L. 106–113Pub. L. 106–113section 41 of this titleAmendment by section 1000(a)(9) [title IV, § 4605(d)] of effective , 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 , set out as a note under .
Pub. L. 106–113Pub. L. 106–113section 1 of this titleAmendment by section 1000(a)(9) [title IV, § 4732(a)(10)(A)] of effective 4 months after , see section 1000(a)(9) [title IV, § 4731] of , set out as a note under .
Effective Date of 1984 Amendment
Pub. L. 98–620section 414(c) of Pub. L. 98–620section 142 of this titleAmendment by applicable to proceedings pending in the Patent and Trademark Office on , and to appeals pending in the United States Court of Appeals for the Federal Circuit on such date, see , set out as a note under .
Effective Date of 1982 Amendment
Pub. L. 97–164section 402 of Pub. L. 97–164section 171 of Title 28Amendment by effective , see , set out as a note under , Judiciary and Judicial Procedure.
Effective Date of 1975 Amendment
Pub. L. 93–596section 4 of Pub. L. 93–596section 1111 of Title 15Amendment by effective , see , set out as a note under , Commerce and Trade.