Editing MPEP 1216

<noinclude>{{MPEP Section|1215|1200|}}</noinclude>

==[[MPEP 1216|1216 Judicial Review]]== 

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

An applicant dissatisfied with the decision in an appeal to 
the Board of Patent Appeals and Interferences under section 134of this title may appeal the 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 of 
this title. A patent owner, or a third-party requester in an inter 
partes reexamination proceeding, who is in any reexamination 
proceeding dissatisfied with the final decision in an appeal to the 
Board of Patent Appeals and Interferences under section 134 may 
appeal the decision only to the United States Court of Appeals for 
the Federal Circuit. A party to an interference dissatisfied with the 
decision of the Board of Patent Appeals and Interferences on the 
interference may appeal the decision to the United States Court of 
Appeals for the Federal Circuit, but such appeal shall be dismissed 
if any adverse party to such interference, within twenty 
days after the appellant has filed notice of appeal in accordance 
with section 142 of this title, files notice with the Director that the 
party elects to have all further proceedings conducted as provided 
in section 146 of this title. If the appellant does not, within thirty 
days after filing of such notice by the adverse party, file a civil 
action under section 146, the decision appealed from shall govern 
the further proceedings in the case.

35 U.S.C. 145. Civil action to obtain patent.

An applicant dissatisfied with the decision of the Board of 
Patent Appeals and Interferences in an appeal under section 
134(a) of this title may, unless appeal has been taken to the United 
States Court of Appeals for the Federal Circuit, have remedy by 
civil action against the Director in the United States District Court 
for the District of Columbia if commenced within such time after 
such decision, not less than sixty days, as the Director appoints. 
The court may adjudge that such applicant is entitled to receive a 
patent for his invention, as specified in any of his claims involved 
in the decision of the Board of Patent Appeals and Interferences, 
as the facts in the case may appear, and such adjudication shall 
authorize the Director to issue such patent on compliance with the 
requirements of law. All the expenses of the proceedings shall be 
paid by the applicant.



35 U.S.C. 306. Appeal.

The patent owner involved in a reexamination proceeding 
under this chapter may appeal under the provisions of section 134of this title, and may seek court review under the provisions of 
sections 141 to 145 of this title, with respect to any decision 
adverse to the patentability of any original or proposed amended 
or new claim of the patent.



37 CFR 1.301. Appeal to U.S. Court of Appeals for the 
Federal Circuit.

 Any applicant, or any owner of a patent involved in any ex 
parte reexamination proceeding filed under § 1.510, dissatisfied 
with the decision of the Board of Patent Appeals and Interferences, 
and any party to an interference dissatisfied with the decision 
of the Board of Patent Appeals and Interferences, may appeal 
to the U.S. Court of Appeals for the Federal Circuit. The appellant 
must take the following steps in such an appeal: In the U. S. Patent 
and Trademark Office, file a written notice of appeal directed to 
the Director (§§ 1.302 and 1.304); and in the Court, file a copy of 
the notice of appeal and pay the fee for appeal as provided by the 
rules of the Court. For appeals by patent owners and third party 
requesters in inter partes reexamination proceedings filed under § 
1.913, § 1.983 is controlling.

37 CFR 1.303. Civil action under 35 U.S.C. 145, 146, 306.



(a)Any applicant, or any owner of a patent involved in an ex 
parte reexamination proceeding filed before November 29, 1999, 
dissatisfied with the decision of the Board of Patent Appeals and 
Interferences, and any party to an interference dissatisfied with the 
decision of the Board of Patent Appeals and Interferences may, 




 

instead of appealing to the U.S. Court of Appeals for the Federal 
Circuit (§ 1.301), have remedy by civil action under 35 U.S.C. 
145 or 146, as appropriate. Such civil action must be commenced 
within the time specified in § 1.304.

(b)If an applicant in an ex parte case, or an owner of a 
patent involved in an ex parte reexamination proceeding filed 
before November 29, 1999, has taken an appeal to the U.S. Court 
of Appeals for the Federal Circuit, he or she thereby waives his or 
her right to proceed under 35 U.S.C. 145.

(c)A notice of election under 35 U.S.C. 141 to have all 
further proceedings on review conducted as provided in 35 U.S.C. 
146 must be filed with the Office of the Solicitor and served as 
provided in § 41.106(e) of this title.

(d)For an ex parte reexamination proceeding filed on or 
after November 29, 1999, and for any inter partes reexamination 
proceeding, no remedy by civil action under 35 U.S.C. 145 is 
available.

37 CFR 1.304. Time for appeal or civil action.



(a)(1)The time for filing the notice of appeal to the U.S. 
Court of Appeals for the Federal Circuit (§ 1.302) or for commencing 
a civil action (§ 1.303) is two months from the date of 
the decision of the Board of Patent Appeals and Interferences. If a 
request for rehearing or reconsideration of the decision is filed 
within the time period provided under § 41.52(a), §
 
41.79(a), or § 
41.127(d) of this title, the time for filing an appeal or commencing 
a civil action shall expire two months after action on the request. 
In contested cases before the Board of Patent Appeals and Interferences, 
the time for filing a cross-appeal or cross-action expires:

(i)Fourteen days after service of the notice of 
appeal or the summons and complaint; or

(ii)Two months after the date of decision of the 
Board of Patent Appeals and Interferences, whichever is later.

(2)The time periods set forth in this section are not subject 
to the provisions of § 1.136, § 1.550(c), or § 1.956, or of § 
41.4 of this title.

(3)The Director may extend the time for filing an 
appeal or commencing a civil action:

(i)For good cause shown if requested in writing 
before the expiration of the period for filing an appeal or commencing 
a civil action, or

(ii)Upon written request after the expiration of the 
period for filing an appeal or commencing a civil action upon a 
showing that the failure to act was the result of excusable neglect.

(b)The times specified in this section in days are calendar 
days. The time specified herein in months are calendar months 
except that one day shall be added to any two-month period which 
includes February 28. If the last day of the time specified for 
appeal or commencing a civil action falls on a Saturday, Sunday 
or Federal holiday in the District of Columbia, the time is 
extended to the next day which is neither a Saturday, Sunday nor a 
Federal holiday.

(c)If a defeated party to an interference has taken an appeal 
to the U.S. Court of Appeals for the Federal Circuit and an 
adverse party has filed notice under 35 U.S.C. 141 electing to 
have all further proceedings conducted under 35 U.S.C. 146(§
 
1.303(c)), the time for filing a civil action thereafter is specified 
in 35 U.S.C. 141. The time for filing a cross-action expires 14 
days after service of the summons and complaint.



I. JUDICIAL REVIEW OF PATENT APPLICATIONS


An applicant for a patent who is dissatisfied with a 
decision of the Board may seek judicial review either 
by an appeal to the U.S. Court of Appeals for the Federal 
Circuit (35 U.S.C. 141 and 37 CFR 1.301) or by a 
civil action in the U.S. District Court for the District 
of Columbia (35 U.S.C. 145 and 37 CFR 1.303(a)). 
By filing an appeal to the Federal Circuit, the applicant 
waives the right to seek judicial review by a civil 
action under 35 U.S.C. 145. See 35 U.S.C. 141 and 
37 CFR 1.303(b).



II. JUDICIAL REVIEW OF EX PARTEREEXAMINATION PROCEEDINGS

 A patent owner involved in an ex parte reexamination 
proceeding filed under 35 U.S.C. 302 for a patent 
that issued from an original application filed in the 
United States before November 29, 1999 (or from an 
international application designating the United States 
filed before November 29, 1999) who is dissatisfied 
with a decision of the Board may seek judicial review 
either by an appeal to the U.S. Court of Appeals for 
the Federal Circuit or by a civil action in the U.S. District 
Court for the District of Columbia. 

 Public Law 106-113, enacted on November 29, 
1999, amended 35 U.S.C. 141 and 35 U.S.C. 145 to 
read as they have been reproduced above. However, 
former versions of 35 U.S.C. 141 and 145 remain 
applicable in the case of an ex parte reexamination 
proceeding for a patent that issued from an original 
application filed before November 29, 1999. The 
former statutes provided for appeal to the Court of 
Appeals for the Federal Circuit (35 U.S.C. 141), or 
alternatively, for a civil action against the Director
in the United States District Court for the District of 
Columbia (35 U.S.C. 145). Former 35 U.S.C. 141 further 
provided that by filing an appeal to the Court of 
Appeals for the Federal Circuit under 35 
U.S.C. 141, 
a patent owner waived his or her right to proceed to 




 

file a civil action under 35 U.S.C. 145. See 37 CFR 
1.303(a)-(b).

 The amended versions of 35 U.S.C. 141 and 145that went into effect on November 29, 1999 provide 
that a patent owner may appeal only to the United 
States Court of Appeals for the Federal Circuit. 
Accordingly, a patent owner involved in the ex partereexamination of a patent that issued from an original 
application filed in the United States on or after 
November 29, 1999 (or from an international application 
designating the United States filed on or after 
November 29, 1999) may seek judicial review only in 
the United States Court of Appeals for the Federal 
Circuit. See 37 CFR 1.303(d). 

 For judicial review of an inter partes reexamination 
proceeding, see 35 U.S.C. 315. Because inter 
partes reexamination procedures are found in Chapter 
31 (and not in Chapter 30) of Title 35 of the United 
States Code, 35 U.S.C. 306 does not apply to an inter 
partes reexamination proceeding. 



III. TIME FOR FILING NOTICE OF APPEAL 
OR COMMENCING CIVIL ACTION 


The time for filing a notice of a 35 U.S.C. 141appeal to the Federal Circuit or for commencing a 
civil action under 35 U.S.C. 145  is within 
2 
months of the Board’s decision. 37 CFR 1.304(a). 
However, if a request for rehearing or reconsideration 
of the Board’s decision is filed within the time provided 
under 37 CFR 41.52 (ex parte appeals) or 
37 
CFR 41.79 (inter partes appeals), the time for 
filing a notice of appeal to the Federal Circuit or for 
commencing a civil action expires 2 months after a 
decision on a request for rehearing or reconsideration 
(37 
CFR 1.304(a)).

These 2-month periods meet the 60-day requirement 
of 35 U.S.C. 142 and 145  except for time 
periods which include February 28. In order to comply 
with the 60-day requirement, 37 CFR 1.304(b)
provides that an additional day shall be added to any 
2-month period for initiating review which includes 
February 28. Appeals will always be timely if the 
judicial review is initiated within 2 months of the final 
decision.

The times specified in 37 CFR 1.304 are calendar 
days. If the last day of the time specified for appeal or 
commencing a civil action falls on a Saturday, Sunday, 
or a Federal holiday in the District of Columbia, 
the time is extended to the next day which is neither a 
Saturday, Sunday, nor a Federal holiday (37 CFR 
1.304(b)).



IV. TIME FOR FILING CROSS-APPEAL 
OR CROSS-ACTION 

37 CFR 1.304(a) specifies that the time for filing a 
cross-appeal or a cross-action expires (A) 14 days 
after service of the notice of appeal or the summons 
and complaint or (B) 2 
months after the decision to be 
reviewed, whichever is later.

37 CFR 1.304(a) provides that the time for filing 
a 
cross-action expires 14 days after service of the 
summons and complaint. The district court will determine 
whether any cross-action was timely filed since 
neither the complaint nor cross-action is filed in the 
U.S. Patent and Trademark Office.



V. EXTENSION OF TIME TO SEEK 
JUDICIAL REVIEW

In 37 CFR 1.304(a), the Office has adopted a standard 
which is similar to the standard used in the Federal 
courts for granting extensions. Under the rule, the 
Director may extend the time (A) for good cause 
if requested before the expiration of the time provided 
for initiating judicial review or (B) upon a showing of 
excusable neglect in failing to initiate judicial review 
if requested after the expiration of the time period. 
This standard is applicable once the “last” decision 
has been entered, i.e., either the decision (in circumstances 
where no timely rehearing or reconsideration 
is sought), the decision on rehearing of the Board in 
an ex parte appeal, or the decision on reconsideration 
of the Board in an interference. Extensions of time 
under 37 CFR 1.136(b) and 1.550(c) and fee extensions 
under 37 CFR 1.136(a) are not available to 
extend the time for the purpose of judicial review 
once a decision or a decision on rehearing or reconsideration 
has been entered. 37 
CFR 1.304(a)(2) states 
that the provisions of 37 
CFR 1.136 and 1.550(c) are 
not available to extend the time to initiate judicial 
review.




 

Requests for extension of time to seek judicial 
review under 37 CFR 1.304 should be addressed as 
follows:

Mail Stop 8

Director of the U.S. Patent and Trademark Office

P.O. Box 1450 

Alexandria, VA 22313-1450

Requests may also be hand-carried to the Office of 
the Solicitor.



VI. APPLICATION UNDER JUDICIAL REVIEW


The administrative file of an application under judicial 
review, even though carried to a court, will not be 
opened to the public by the U.S. Patent and Trademark 
Office, unless it is otherwise available to the 
public under 37 CFR 1.11.

During judicial review, the involved application or 
reexamination is not under the jurisdiction of the 
examiner or the Board, unless remanded to the U.S. 
Patent and Trademark Office by the court. Any 
amendment  can be admitted only under the provisions 
of 37 CFR 1.198. See MPEP §
 
1214.07.



VII. SERVICE OF COURT PAPERS ON THE 
DIRECTOR

Rule 5(b) of the Federal Rules of Civil Procedure 
provides in pertinent part:

Whenever under these rules service is required or permitted 
to be made upon a party represented by an attorney 
the service shall be made upon the attorney unless 
service 
upon the party is ordered by the court. Service 
upon the attorney . . . shall be made by delivering a 
copy 
to the attorney or party or by mailing it to the attorney 
or party at the attorney’s or party’s last known 
address 
. . . .

Similarly, Rule 25(b) of the Federal Rules of 
Appellate Procedure provides that “[s]ervice on a 
party represented by counsel must be made on the 
party’s counsel.” 

Accordingly, all service copies of papers filed in 
court proceedings in which the Director is a 
party must be served on the Solicitor of the Patent and 
Trademark Office. Service on the Solicitor may be 
effected in either of the following ways: 

(A)By hand between 8:30 A.M. and 5:00 P.M. 
EST to the Office of the Solicitor at 600 Dulany 
Street, Madison West Building, Room 8C43, Alexandria, 
VA 22314.

(B)By mail in an envelope addressed as follows:

Office of the Solicitor

P.O. Box 15667

Arlington, VA 22215

While the above mail service address may be supplemented 
to include the name of the particular attorney 
assigned to the court case, it must not be 
supplemented to refer to either the Director or 
the U.S. Patent and Trademark Office.

Any court papers mailed to an address other than 
the above mail service address or delivered by hand to 
the U.S. Patent and Trademark Office are deemed to 
have been served on the Director when actually 
received in the Office of the Solicitor.

The above mail service address should not be used 
for filing a notice of appeal to the Federal Circuit. See 
MPEP § 1216.01. Nor should the above mail service 
address be used for noncourt papers, i.e., papers 
which are intended to be filed in the U.S. Patent and 
Trademark Office in connection with an application 
or other proceeding pending in the U.S. Patent and 
Trademark Office. ANY NONCOURT PAPERS 
WHICH ARE MAILED TO THE ABOVE MAIL 
SERVICE ADDRESS WILL BE RETURNED TO 
THE SENDER. NO EXCEPTIONS WILL BE 
MADE TO THIS POLICY.

1216.01Appeals to the Federal Circuit 
[R-3]

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 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. 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 Director within the time specified in § 1.304.

(b)In interferences, the notice must be served as provided in 
§ 41.106(e) of this title.

(c)In ex parte reexamination proceedings, the notice must 
be served as provided in § 1.550(f).

(d)In inter partes reexamination proceedings, the notice 
must be served as provided in § 1.903.

(e)Notices of appeal directed to the Director shall be mailed 
to or served by hand on the General Counsel as provided in § 
104.2.

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 Director 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 Director, 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:

Mail Stop 8

Director of the U.S. Patent and Trademark Office

P.O. Box 1450 

Alexandria, VA 22313-1450

(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:

Mail Stop 8

Director of the U.S. Patent and Trademark Office

P.O. Box 1450 

Alexandria, VA 22313-1450

(C)By hand to the Office of the Solicitor, at 
600 Dulany Street, Madison West Building, Room 
8C43, Alexandria, VA 22314.

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.





I. 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 




 

the mandate was issued by the Federal Circuit
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(b), 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 
issued, the application or reexamination 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 issue
date  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 . 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.



II. 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 Director.

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.

1216.02Civil Suits Under 35 U.S.C. 145 
[R-3]

A 35 U.S.C. 145 civil action is commenced by filing 
a complaint in the U.S. District Court for the District 
of Columbia within the time specified in 37 CFR 
1.304 (see MPEP § 1216). Furthermore, copies of the 
complaint and summons must be served in a timely 
manner on the Solicitor, the U.S. Attorney for the District 
of Columbia, and the 
Attorney General in the 
manner set forth in Rule 4(i) of the Federal Rules of 
Civil Procedure. 
 
Regarding timely service, see Walsdorf 
v. Comm’r, 229 
USPQ 559 (D.D.C. 1986) and 
Hodge v. Rostker, 501 F. Supp. 332 (D.D.C. 1980). 
When a 35 U.S.C. 145 civil action is filed, a notice 
thereof is placed in the application or reexamination 
file, which ordinarily will be kept in the Solicitor’s 
Office pending termination of the civil action. All 
the expenses of the proceedings shall be paid by the 
applicant (see 35 U.S.C. 145).

In an action under 35 U.S.C. 145, the plaintiff may 
introduce evidence not previously presented to the 
U.S. Patent and Trademark Office. However, plaintiff 
will be precluded from presenting new issues, at least 
in the absence of some reason of justice put forward 
for failure to present the issue to the U.S. Patent and 
Trademark Office. DeSeversky v. Brenner, 424 F.2d 
857, 858, 164 USPQ 495, 496 (D.C. Cir. 1970); 
MacKay v. Quigg, 641 F. Supp. 567, 570, 231 USPQ 
907, 908 (D.D.C. 1986). Furthermore, new evidence 
is not admissible in district court where it was available 
to the parties but was withheld from the U.S. 
Patent and Trademark Office as a result of fraud, bad 
faith, or gross negligence. DeSeversky, 424 F.2d at 
858 n.5, 164 USPQ at 496 n.5; California Research 
Corp. v. Ladd, 356 F.2d 813, 821 
n.18, 148 USPQ 
404, 473 n.18 (D.C. Cir. 1966); MacKay, 641 F. Supp. 
at 570, 231 USPQ at 908; Monsanto Company v. 
Kamp, 269 F. Supp. 818, 822, 154 USPQ 259, 
260 
(D.D.C. 1967); Killian v. Watson, 121 USPQ 507, 
507 
(D.D.C. 1958).

Upon termination of the civil action, a statement of 
the court’s final disposition of the case is placed in the 
application or reexamination file, which is then 
returned to the examiner for action in accordance 
with 
the same procedures as follow termination of a 
35 U.S.C. 141 appeal. See MPEP § 1216.01. 37 CFR 
1.197(b) provides that a civil action is terminated 
when the time to appeal the judgment expires. Where 
the exact date when the civil action was terminated is 
material, the date may be ascertained from the Solicitor’s 
Office.

The procedures to be followed in the U.S. Patent 
and Trademark Office after a decision, remand, or dismissal 
of the case by the district court are the same as 
the procedures followed with respect to 35 U.S.C. 141appeals. See MPEP §
 
1216.01.

Where a civil action involving an application has 
been dismissed before coming to trial, the application 
will not be opened to the public unless it is otherwise 
available to the public under 37 CFR 1.11. However, 
the complaint and any other court papers not under a 
protective order are open to the public and may be 
inspected at the Office of the Clerk for the U.S. District 
Court for the District of Columbia, located in the 
U.S. Courthouse, 333 Constitution Avenue, N.W., 
Washington, DC 20001. The court papers in the 
Office of the Solicitor are not generally made available 
for public inspection.

Any subpoena by the district court for an application 
or reexamination file should be hand-carried to 
the Office of the Solicitor.