Title 35 — Patents
Part II · Chapter 12 — Examination of Application
§ 134. Appeal to the Patent Trial and Appeal Board
Statutory text
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.
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.
Legislative history
Reconstructed from this section’s Code source credit and amendment notes, resolved against the local Statutes at Large. Editorial notes are evidence, not the law that made the change.
July 19, 1952, ch. 950, 66 Stat. 801 · 66 Stat. 801
Enacted · 35 U.S.C. § 134
July 19, 1952, ch. 950, 66 Stat. 801
Source evidence
Code source credit
July 19, 1952, ch. 950, 66 Stat. 801Patent Law Amendments Act of 1984
Pub. L. 98–622 title II § 204(b)(1) · 98 Stat. 3383
Substituted · 35 U.S.C. § 134
Pub. L. 98–622 substituted “Patent Appeals and Interferences” for “Appeals” in section catchline and text
Source evidence
Code amendment note
Pub. L. 98–622 substituted “Patent Appeals and Interferences” for “Appeals” in section catchline and text.Enacted provision · exact public law section
(1) Section 134 of title 35, United States Code, is amended— (A) in the section caption by striking out “Appeals” and inserting in lieu thereof “Patent Appeals and Interferences”; and (B) by striking out “Appeals” and inserting in lieu thereof “Patent Appeals and Interferences”.District of Columbia Appropriations Act, 2000
Pub. L. 106–113 div. B § 1000(a)(9)(tIV)(s4605)(b) · 113 Stat. 1501
Amended · 35 U.S.C. § 134
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.”
Source evidence
Code amendment note
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.”Intellectual Property and High Technology Technical Amendments Act of 2002
Pub. L. 107–273 § 13202(b)(1) · 116 Stat. 1758
Substituted · 35 U.S.C. § 134(a); 35 U.S.C. § 134(b)
Pub. L. 107–273, § 13202(b)(1), substituted “primary examiner” for “administrative patent judge”
Source evidence
Code amendment note
Subsecs. (a), (b). Pub. L. 107–273, § 13202(b)(1), substituted “primary examiner” for “administrative patent judge”.Enacted provision · exact public law section
(1) Appeal to the board of patent appeals and interferences.— Subsections (a), (b), and (c) of section 134 of title 35, United States Code, are each amended by striking “administrative patent judge” each place it appears and inserting “primary examiner”.Intellectual Property and High Technology Technical Amendments Act of 2002
Pub. L. 107–273 § 13202(b)(1) · 116 Stat. 1758
Substituted · 35 U.S.C. § 134(c)
Pub. L. 107–273, § 13202(b)(1), substituted “primary examiner” for “administrative patent judge”
Source evidence
Code amendment note
Subsec. (c). Pub. L. 107–273, § 13202(b)(1), substituted “primary examiner” for “administrative patent judge”.Enacted provision · exact public law section
(1) Appeal to the board of patent appeals and interferences.— Subsections (a), (b), and (c) of section 134 of title 35, United States Code, are each amended by striking “administrative patent judge” each place it appears and inserting “primary examiner”.Patent and Trademark Office Authorization Act of 2002
Pub. L. 107–273 § 13106(b) · 116 Stat. 1758
Struck · 35 U.S.C. § 134(c)
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.”
Target inherited from the preceding amendment note.
Source evidence
Code amendment note
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.”Enacted provision · exact public law section
(b) Appeal to Board of Patent Appeals and Interferences.— Section 134(c) of title 35, United States Code, is amended by striking the last sentence.Pub. L. 112–29 § 3(j)(3) · 125 Stat. 290
Amended · 35 U.S.C. § 134
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”
Source evidence
Code amendment note
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”.Enacted provision · exact public law section
(3) The section heading for section 134 of title 35, United States Code, is amended to read as follows: “§ 134. Appeal to the Patent Trial and Appeal Board” .Effective date note
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.Pub. L. 112–29 § 3(j)(1) · 125 Stat. 290
Substituted · 35 U.S.C. § 134(a)
Pub. L. 112–29, § 3(j)(1), substituted “Patent Trial and Appeal Board” for “Board of Patent Appeals and Interferences”
Source evidence
Code amendment note
Subsec. (a). Pub. L. 112–29, § 3(j)(1), substituted “Patent Trial and Appeal Board” for “Board of Patent Appeals and Interferences”.Enacted provision · exact public law section
(1) Sections 134, 145, 146, 154, and 305 of title 35, United States Code, are each amended by striking “Board of Patent Appeals and Interferences” each place it appears and inserting “Patent Trial and Appeal Board”.Effective date note
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.Pub. L. 112–29 § 7(b)(1) · 125 Stat. 290
Substituted · 35 U.S.C. § 134(b)
Pub. L. 112–29, § 7(b)(1), substituted “a reexamination” for “any reexamination proceeding”
Source evidence
Code amendment note
Subsec. (b). Pub. L. 112–29, § 7(b)(1), substituted “a reexamination” for “any reexamination proceeding”.Enacted provision · exact public law section
(1) in subsection (b), by striking “any reexamination proceeding” and inserting “a reexamination”; andEffective date note
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.Pub. L. 112–29 § 3(j)(1) · 125 Stat. 290
Substituted · 35 U.S.C. § 134(b)
Pub. L. 112–29, § 3(j)(1), substituted “Patent Trial and Appeal Board” for “Board of Patent Appeals and Interferences”
Target inherited from the preceding amendment note.
Source evidence
Code amendment note
Pub. L. 112–29, § 3(j)(1), substituted “Patent Trial and Appeal Board” for “Board of Patent Appeals and Interferences”.Enacted provision · exact public law section
(1) Sections 134, 145, 146, 154, and 305 of title 35, United States Code, are each amended by striking “Board of Patent Appeals and Interferences” each place it appears and inserting “Patent Trial and Appeal Board”.Effective date note
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.Pub. L. 112–29 § 7(b)(2) · 125 Stat. 290
Struck · 35 U.S.C. § 134(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.”
Source evidence
Code amendment note
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.”Enacted provision · exact public law section
(2) by striking subsection (c).Effective date note
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.
9 of 11 references resolved to an enrolled provision · 2 partial
Notes
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 Notes
Amendments1984–2011 · 4 rounds
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 Subsidiaries
Effective 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 , 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 , 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), , 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 [].”
Effective Date of 1999 Amendment
Pub. L. 107–273, div. C, title III, § 13202(d), , 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 [].”
Amendment by Pub. L. 106–113 effective , 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 , see section 207 of Pub. L. 98–622, set out as a note under section 41 of this title.
Credits
1952–2011 · 5 acts
- 1952July 19, 1952, ch. 950, 66 Stat. 801
- 1984Pub. L. 98–622, title II, § 204(b)(1), , 98 Stat. 3388
- 1999Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4605(b)], , 113 Stat. 1536, 1501A–570
- 2002Pub. L. 107–273, div. C, title III, §§ 13106(b), 13202(b)(1), , 116 Stat. 1901
- 2011Pub. L. 112–29, §§ 3(j)(1), (3), 7(b), , 125 Stat. 290, 313.
Show as published
(July 19, 1952, ch. 950, 66 Stat. 801; Pub. L. 98–622, title II, § 204(b)(1), , 98 Stat. 3388; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4605(b)], , 113 Stat. 1536, 1501A–570; Pub. L. 107–273, div. C, title III, §§ 13106(b), 13202(b)(1), , 116 Stat. 1901; Pub. L. 112–29, §§ 3(j)(1), (3), 7(b), , 125 Stat. 290, 313.)