Ex Parte Appeal Decision: What Next?

Author:  Amanda K. Murphy, Ph.D.
Editor: Adriana L. Burgy

After receiving a decision from the Patent Trial and Appeal Board (PTAB) in an appeal from an examiner’s final rejection during ex parte examination, Applicants have limited options.  Applicants can:

(1) request rehearing under Board Rule 52 (37 C.F.R. § 41.52);

(2) reopen prosecution by filing a request continued examination (RCE) under 37 C.F.R. § 1.114;

(3) appeal to the United States Court of Appeals for the Federal Circuit under 35 U.S.C. § 141; or

(4) commence a civil action in the United States District Court for the Eastern District of Virginia under 35 U.S.C. § 145. 

Options (2)-(4) are mutually exclusive, and must be commenced within 63 days from the mailing date of the Board’s decision.  Prior to pursuing any of those options, however, Applicants may file a request for rehearing by the panel.  Requests for rehearing must be filed within two months from the mailing date of the Board’s decision.  If an Applicant requests rehearing, the time-period for pursuing options (2)-(4) is reset to be 63 days after the Board acts on the rehearing request.

Requests for rehearing must state, with particularity, the points believed to have been misapprehended or overlooked by the Board.  New arguments or evidence not previously relied on are not permitted in a request for rehearing except under the following circumstances:  (1) to address a recent relevant decision of the Board or a Federal Court (see Board Rule 52(a)(2)); (2) to address a new ground of rejection designated as such in the Board’s decision (see Board Rule 52(a)(3)); or (3) to argue that the Board’s decision contains an undesignated new ground of rejection (see Board Rule 52(a)(4)).

Link here to the USPTO website regarding procedure following decision by the Board.


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