1002.02(f) Petitions and Matters Decided by the Chief Administrative Patent Judge of the Patent Trial and Appeal Board [R-07.2015]

Created On
byChhabra Law Firm

The Chief Administrative Patent Judge is authorized to re-delegate authority to decide any of these petitions or matters to the Deputy Chief Administrative Patent Judge, to a Vice Chief Administrative Patent Judge, a Lead Administrative Patent Judge, or to an Administrative Patent Judge of the Patent Trial and Appeal Board.

1. If raised properly during ex parte reexamination and in a subsequent appeal, issues relating to an examiner’s determination that a reference raises a substantial new question of patentability. See 75 FR 36357 (June 25, 2010). This authority may be re-delegated to the panel of the Patent Trial and Appeal Board deciding the appeal in the reexamination.

2. Ordering, in the interests-of-justice, an interference commenced before September 16, 2012 to be dismissed without prejudice to the filing of a petition for post-grant review. 37 CFR 42.200(d).

3. Designation of members of the Patent Trial and Appeal Board to, on written appeal, review adverse decisions of examiners upon applications for patents, review appeals of ex parte reexaminations, conduct derivation proceedings, conduct inter partes reviews and post-grant reviews, initially and on request for reconsideration. 35 U.S.C. 6.

4. Designation of members of the Patent Trial and Appeal Board to conduct proceedings in an interference including the determination of priority and patentability of invention. Pre-AIA 35 U.S.C. 6.

5. Designation of members of the Patent Trial and Appeal Board to review appeals of inter partes reexaminations.

6. Requests related to superintending the functions of the Patent Trial and Appeal Board, including:

  • a. Requests for decision on a question of policy certified by a panel or an administrative patent judge of the Patent Trial and Appeal Board. 37 CFR 41.3(a).
  • b. Petitions to review a determination of a non-compliant brief. 37 CFR 41.37(d), 41.68(c), and 41.71(e).
  • c. Certification of a decision by a panel of the Patent Trial and Appeal Board to disqualify counsel for cause in a trial proceeding. 37 CFR 42.10(d).
  • d. Extensions of pendency for a period of up to six months in an inter partes or a post-grant review proceeding. 37 CFR 42.100(c), 42.200(c), and 42.300(c).
  • e. Petitions under 37 CFR 1.181, 1.182, and 1.183 from actions of the Patent Trial and Appeal Board.
  • f. Petitions for an extension of time for seeking rehearing in an ex parte appeal before the Patent Trial and Appeal Board.
  • g. Petitions to revive an application abandoned for, or an ex parte or inter partes reexamination terminated for, failure to file a timely corrected brief in reply to a Notification of Defective or Non-Compliant Brief. 37 CFR 1.137, 41.37, and 41.67.
  • h. Petitions to revive an inter partes reexamination terminated for failure to file a timely corrected Request to Reopen Prosecution in reply to an Order by the Patent Trial and Appeal Board denying a request to reopen prosecution pursuant to 37 CFR 41.77(b)(1).

7. Petitions under pre-AIA 35 U.S.C. 135(c):