So you had a disagreement with a patent Examiner and appealed your case to the Board of Patent Appeals and Interferences (BPAI), but the Board ruled against you. What are your options? Well, you could file a continuation application or RCE and keep trying at the Patent Office, but if you really think the Board got it wrong and you want it overturned, you can appeal to federal court.
The BPAI is only an administrative agency of the government, with cases decided by Administrative Patent Judges (APJs). Once you have exhausted your administrative remedies, you have the right to pursue judicial review of the administrative decision. There are two different types of courts that have jurisdiction over such cases and which you have the option of appealing to. One is Federal District Court and the other is the Court of Appeals for the Federal Circuit in Washington, D.C.
Federal District Court
District Courts are found in every state. For example, Virginia has two District Courts, the Eastern District of Virginia and the Western District of Virginia. If you appeal to a District Court, you are entitled to a trial de novo. That means you get a whole new trial, from scratch, and are not bound by the record at the Patent Office. The judge will not review the Patent Office’s decision for correctness, but will instead arrive at his or her own independent ruling.
This gives you the opportunity to present new evidence and arguments that were not presented before the Examiner or BPAI. Appealing to a District Court is therefore an attractive option if your application could benefit from the submission of additional evidence in your favor.
On the other hand, in a complex case with a significant amount of evidence, a trial de novo can be very expensive, often involving expert testimony. If you are satisfied with the evidence on record before the Patent Office, you may prefer to appeal to the Court of Appeals for the Federal Circuit.
The Court of Appeals for the Federal Circuit
The Court of Appeals for the Federal Circuit is one level below the Supreme Court of the Unites States and has appellate jurisdiction over all patent cases (among other subject matter), hearing appeals from the Board of Patent Appeals and Interferences as well as all federal district courts. Patent cases make up about 30% of the Court’s docket.
At the Federal Circuit, the Patent Office’s decision is reviewed for correctness. Issues of fact are considered under a substantial evidence standard, meaning that the PTO’s holding on a factual matter will be upheld if it is supported by substantial evidence. Legal issues are considered de novo, without any deference to the legal conclusions of the Patent Office.
Since the Federal Circuit is an appellate court and only reviews the decision of the PTO, no new evidence or arguments can be submitted. If you are satisfied with the record that was before the Patent Office and believe the Board made a mistake of law, the Federal Circuit may by the best place to appeal. The Federal Circuit, being the appellate court for all patent matters, is extremely well versed in patent law, much more so than the average district court. A Federal Circuit appeal can be resolved within a year, depending on the Court’s docket.
Cases taken initially to a District Court can also be appealed to the Federal Circuit after the District Court has rendered its decision, in which case the Federal Circuit reviews the decision of the District Court (not the PTO).
Costs
The cost of an appeal to either a District Court or the Court of Appeals for the Federal Circuit can be extremely high. I have been quoted a price of approximately $500,ooo for a big law firm to appeal a case to the Federal Circuit. For a relatively simple case with well-defined issues, I would personally carry out such an appeal for approximately $25,000 to $30,000. A District Court case could be more, depending on the type of evidence to be submitted and other variables.
To hear me argue a case at the Federal Circuit, click here.
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