IP Law Daily Non-final procedural actions taken by USPTO cannot be challenged
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Tuesday, May 26, 2020

Non-final procedural actions taken by USPTO cannot be challenged

By Pamela C. Maloney, J.D.

An applicant’s challenge to certain procedural steps taken by the USPTO with regard to two separate applications was dismissed because the agency’s actions were not final.

The federal district court in Richmond, Virginia, lacked subject matter jurisdiction to review non-final decisions issued by the USPTO in relation to two separate patent applications, the U.S. Court of Appeals for the Federal Circuit has ruled, affirming the district court’s dismissal of the applicant’s challenges. The Federal Circuit also affirmed the district court’s finding that the statute of limitations barred the applicant’s challenge to the validity of the agency’s 2011 amendments to its regulations governing ex parte appeals (Odyssey Logistics and Technology Corp. v. Iancu, May 22, 2020, Hughes, T.).

Odyssey Logistics and Technology Corp. filed a lawsuit in the to challenge the legality of decisions made by the USPTO in relation to its prosecution of U.S. Patent Application No. 11/005,678 and U.S. Patent Application No. 11/465,603 and to contest whether the 2011 amendments to the Board of Patent Appeals and Interferences in ex parte appeals conformed with the USPTO’s statutory authority. Odyssey’s challenge to the examination of the ’678 patent focused on the propriety of the examiner’s request for rehearing and its challenge involving the ’603 patent examination involved the examiner’s refusal to include additional evidence and explanations offered by Odyssey as part of the written record. The district court dismissed the challenges to the USPTO’s procedural actions, finding that Odyssey was challenging non-final actions before the board and dismissed the challenges to the 2011 amendments, finding that the statute of limitations had run. Odyssey appealed.

Finality requirement. Explaining that only final agency actions were subject to judicial review, the Federal Circuit rejected Odyssey’s argument that the Patent Trial and Appeal Board’s reversal of the examiner’s rejection of the ’678 patent applicant was a final agency action and that the rehearing proceedings were ultra vires actions, i.e., beyond the scope of the Board’s legal power. The rehearing process at issue was an ordinary agency action conducted in accordance with the USPTO’s Manual of Patent Examining Procedure and during which the Board continued to consider the validity of an applicant’s claims. Until the Board issued its rehearing decision, the USPTO’s decision-making process was not consummated and Odyssey’s rights and obligations in the ’678 patent had not been determined. Without such final action from the USPTO, Odyssey was not entitled to judicial review, the Federal Circuit held.

The Federal Circuit also rejected Odyssey’s assertion that because the examiner’s request for rehearing was not filed within 63 days after issuance of the Board’s decision, that decision was final. The requirement that requests for rehearing be filed within two months after issuance of a final decision applied to applicants only and did not restrict the Patent Office’s rights to request a rehearing unless a delay by the USPTO would cause unfair prejudice to the applicant. Odyssey did not allege any prejudice in the delayed request for rehearing and, if any prejudice did occur, Odyssey could raise its objections during the rehearing.

With regard to the ’603 patent application, the district court had been asked to review the Technology Center Director’s dismissal of Odyssey’s post-rejection petition requesting the inclusion in the record of additional evidence providing new grounds to support the application and asking the examiner to provide additional explanations for his responses to Odyssey’s arguments. According to the Federal Circuit, the dismissal of Odyssey’s petition to designate new grounds was not a final agency action because, until the Board itself refused to consider any new arguments, the dismissal did not determine any rights or obligations or result in any legal consequences.

Statute of limitations. Despite Odyssey’s arguments to the contrary, the statute of limitations governing facial, substantive challenges to agency regulations began to run on the publication date, not the effective date of those regulations. Odyssey’s challenge to the 2011 ex parte appeal amendments did not assert an adverse application of the regulations, nor did it seek relief from a specific application of the regulations. If an adverse application had been asserted, the statute of limitations would have accrued either when the agency promulgated the regulation or at the time of an adverse application, whichever came later. Noting that the lawsuit had been filed more than six years after the ex parte appeals rules had been published and that there were no allegations of an adverse application against Odyssey, the Federal Circuit affirmed the district court’s finding that the challenge to those amendments was time-barred.

This case is No. 19-1066.

Attorneys: Robert Bauer (Bauer Law Offices) and Charles Molster, III (Law Offices of Charles B. Molster, III PLLC) for Odyssey Logistics and Technology Corp. Peter John Sawert, U.S. Patent and Trademark Office, for Andrei Iancu.

Companies: Odyssey Logistics and Technology Corp.

MainStory: TopStory Patent GCNNews FedCirNews

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