1216.02 Civil Suits Under 35 U.S.C. 145 and 146 [R-11.2013]
A civil action under 35 U.S.C. 145 or 146 is commenced by filing a complaint in the U.S. District Court for the Eastern District of Virginia within the time specified in 37 CFR 90.3(a)(3)(i) (see MPEP § 1216). Furthermore, copies of the complaint and summons must be served in a timely manner on the Director, 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. All the expenses of the proceedings shall be paid by the applicant (see 35 U.S.C. 145).
The party initiating an action under 35 U.S.C. 146 must also file a copy of the complaint with the Board in the manner provided in 37 CFR 42.6(b) no later than five days after filing the complaint in district court. 37 CFR 90.2(c). Failure to comply with this requirement can result in further action within the Office consistent with the final Board decision.
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. Hyatt v. Kappos, 625 F.3d 1320 (Fed. Cir. 2010) (en banc), aff’d, 132 S. Ct. 1690 (2012); DeSeversky v. Brenner, 424 F.2d 857, 858, 164 USPQ 495, 496 (D.C. Cir. 1970).
Upon termination of the civil action, a statement of the court’s final disposition of the case is placed in the electronic 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 Office of the Solicitor.
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. 141 appeals. See MPEP § 1216.01.
Any subpoena by the district court for an application or reexamination file should be hand-carried to the Office of the Solicitor.