U.S. Code » Title 35 » Part PART II— PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS › Chapter CHAPTER 12— EXAMINATION OF APPLICATION

35 U.S.C. § 134

Appeal to the Patent Trial and Appeal Board

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(a)Patent Applicant.—An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal.(b)Patent Owner.—A patent owner in a reexamination may appeal from the final rejection of any claim by the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal.(July 19, 1952, ch. 950, 66 Stat. 801; Pub. L. 98–622, title II, § 204(b)(1), Nov. 8, 1984, 98 Stat. 3388; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4605(b)], Nov. 29, 1999, 113 Stat. 1536, 1501A–570; Pub. L. 107–273, div. C, title III, §§ 13106(b), 13202(b)(1), Nov. 2, 2002, 116 Stat. 1901; Pub. L. 112–29, §§ 3(j)(1), (3), 7(b), Sept. 16, 2011, 125 Stat. 290, 313.)Historical and Revision Notes

Based on Title 35, U.S.C., 1946 ed., § 57 (R.S. 4909 amended (1) Mar. 2, 1927, ch. 273, § 5, 44 Stat. 1335, 1336, (2) Aug. 5, 1939, ch. 451, § 2, 53 Stat. 1212).

Reference to reissues is omitted in view of the general provision in section 251. Minor changes in language are made.

Editorial NotesAmendments

2011—Pub. L. 112–29, § 3(j)(3), amended section catchline generally. Prior to amendment, section catchline read as follows: “Appeal to the Board of Patent Appeals and Interferences”.

Subsec. (a). Pub. L. 112–29, § 3(j)(1), substituted “Patent Trial and Appeal Board” for “Board of Patent Appeals and Interferences”.

Subsec. (b). Pub. L. 112–29, § 7(b)(1), substituted “a reexamination” for “any reexamination proceeding”.

Pub. L. 112–29, § 3(j)(1), substituted “Patent Trial and Appeal Board” for “Board of Patent Appeals and Interferences”.

Subsec. (c). Pub. L. 112–29, § 7(b)(2), struck out subsec. (c). Prior to amendment, text read as follows: “A third-party requester in an inter partes proceeding may appeal to the Board of Patent Appeals and Interferences from the final decision of the primary examiner favorable to the patentability of any original or proposed amended or new claim of a patent, having once paid the fee for such appeal.”

2002—Subsecs. (a), (b). Pub. L. 107–273, § 13202(b)(1), substituted “primary examiner” for “administrative patent judge”.

Subsec. (c). Pub. L. 107–273, § 13202(b)(1), substituted “primary examiner” for “administrative patent judge”.

Pub. L. 107–273, § 13106(b), struck out at end “The third-party requester may not appeal the decision of the Board of Patent Appeals and Interferences.”

1999—Pub. L. 106–113 reenacted section catchline without change and amended text generally. Prior to amendment, text read as follows: “An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Board of Patent Appeals and Interferences, having once paid the fee for such appeal.”

1984—Pub. L. 98–622 substituted “Patent Appeals and Interferences” for “Appeals” in section catchline and text.

Statutory Notes and Related SubsidiariesEffective Date of 2011 Amendment

Amendment by section 3(j)(1), (3) of Pub. L. 112–29 effective upon the expiration of the 18-month period beginning on Sept. 16, 2011, and applicable to certain applications for patent and any patents issuing thereon, see section 3(n) of Pub. L. 112–29, set out as an Effective Date of 2011 Amendment; Savings Provisions note under section 100 of this title.

Amendment by section 7(b) of Pub. L. 112–29 effective upon the expiration 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

Pub. L. 107–273, div. C, title III, § 13106(d), Nov. 2, 2002, 116 Stat. 1901, provided that: “The amendments made by this section [amending this section and sections 141 and 315 of this title] apply with respect to any reexamination proceeding commenced on or after the date of enactment of this Act [Nov. 2, 2002].”

Effective Date of 1999 Amendment

Pub. L. 107–273, div. C, title III, § 13202(d), Nov. 2, 2002, 116 Stat. 1902, provided that: “The amendments made by section 4605(b), (c), and (e) of the Intellectual Property and Communications Omnibus Reform Act, as enacted by section 1000(a)(9) of Public Law 106–113 [amending this section and sections 141 and 145 of this title], shall apply to any reexamination filed in the United States Patent and Trademark Office on or after the date of enactment of Public Law 106–113 [Nov. 29, 1999].”

Amendment by 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.

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.

Notes of Decisions
Cited in 90 cases (9 in the last 5 years), 1958–2026 · leading case: Gunn v. Minton, 133 S. Ct. 1059 (2013).
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Gunn v. Minton, 133 S. Ct. 1059 (2013). “2012); 35 U. S. C. §§ 134 (a), 141,145; Reply Brief 9-10.”
Pregis Corp. v. Kappos, 700 F.3d 1348 (Fed. Cir. 2012). · cites it 3× “35 U.S.C. §§ 134 , 141, 145. Second, the statute permits third parties to challenge issued patents through carefully-circumscribed reexamination proceedings.”
K/S Himpp v. Hear-Wear Tech., LLC, 751 F.3d 1362 (Fed. Cir. 2014). · cites it 4× “Hear-Wear appealed to the Board from the inter partes reexamination under 35 U.S.C. §§ 134 (b) and 315(a) and HIMPP cross-appealed under 35 U.”
Teles Ag v. Kappos, 846 F. Supp. 2d 102 (D.D.C. 2012). · cites it 10× “Provisions for administrative appeal of an initial examination of a patent application or a reexamination are provided for in 35 U.S.C. § 134 , which was subject only to a minor change in 1984 before it was amended in 1999.”
In re Teles AG Informationstechnologien, 747 F.3d 1357 (Fed. Cir. 2014). · cites it 3× “” 35 U.S.C. § 134 (1994). As amended, the section for the first time addressed patent applicants, patent owners, and third party requesters individually, as follows: (a)PATENT APPLICANT.”
Canady v. Erbe Elektromedizin GmbH, 271 F. Supp. 2d 64 (D.D.C. 2002). · cites it 2× “35 U.S.C. § 134 . When administrative remedies have been exhausted, that party may appeal to either this court or to the Federal Circuit.”
In Re Mouttet, 686 F.3d 1322 (Fed. Cir. 2012). “4 Mouttet appealed to the Board under 35 U.S.C. § 134 (a). On March 29, 2011, the Board affirmed the examiner’s rejection of all twenty *1330 claims.”
Snipr Tech. Ltd. v. Rockefeller Univ., 72 F.4th 1372 (Fed. Cir. 2023). · cites it 2× “AIA § 3(j) (eliminating references to interferences in 35 U.S.C. §§ 134 , 145, 146, 154, 305). The priority of invention requirement and re- lated interferences were no longer relevant because patent- ability under the AIA is based on the “effective filing date of the claimed…”
Digit. Equip. Corp. v. Sidney A. Diamond, Etc., 653 F.2d 701 (1st Cir. 1981). · cites it 2× “35 U.S.C. §§ 134 , 141 & 145. This “short-circuiting” of the normal review procedures is said to be especially egregious in cases such as this one where a dispute involving the “state of mind” of various individuals has been resolved on the basis of a paper record without…”
Chudik v. Hirshfeld, 987 F.3d 1033 (Fed. Cir. 2021). · cites it 2× “Rather than immediately taking an appeal to the Patent Trial and Ap- peal Board under 35 U.S.C. § 134 (a), Dr. Chudik requested a continued examination under 35 U.”
Ropes & Gray LLP v. Jalbert (In Re Engage, Inc.), 544 F.3d 50 (1st Cir. 2008). “35 U.S.C. § 134 . An applicant may challenge a decision by the Board by appealing to the Federal Circuit, id.”
In Re Kuriappan P. Alappat, Edward E. Averill & James G. Larsen, 33 F.3d 1526 (Fed. Cir. 1994). “Alappat appealed this rejection to the Board pursuant to 35 U.S.C. § 134 (1988), and a three-member panel made up of Examiners-in-Chief Lindquist, Thomas, and Krass reversed the Examiner’s non-statutory subject matter rejection in a decision mailed June 26, 1991.”
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— 35 U.S.C. § 134(a) — 1 case
Hyatt v. Matal (D.D.C. 2018).
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