§ 143. Proceedings on 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.

1. 1952

   July 19, 1952, ch. 950, 66 Stat. 802 · 66 Stat. 802

   Enacted · 35 U.S.C. § 143

   July 19, 1952, ch. 950, 66 Stat. 802

   Source evidence

   Code source credit
   July 19, 1952, ch. 950, 66 Stat. 802

2. 1975

   Pub. L. 93–596 § 1 · 88 Stat. 1949

   Substituted · 35 U.S.C. § 143

   Pub. L. 93–596 substituted “Patent and Trademark Office” for “Patent Office”

   Source evidence

   Code amendment note
   Pub. L. 93–596 substituted “Patent and Trademark Office” for “Patent Office”.

   Enacted provision · exact public law section
   Section 1. The Trademark Act of 1946, 60 Stat. 427, as amended (15 U.S.C. sec. 1051 et seq. (1970)), and title 35 of the United States Code, entitled “Patents”, are amended by striking out each time they 35 USC 1 et seq. appear “Patent Office” and “Commissioner of Patents” and inserting in lieu thereof “Patent and Trademark Office” and “Commissioner of Patents and Trademarks”, respectively.

3. 1982

   Federal Courts Improvement Act of 1982

   Pub. L. 97–164 title I § 163(a)(7) · 96 Stat. 25

   Substituted · 35 U.S.C. § 143

   Pub. L. 97–164 substituted “Court of Appeals for the Federal Circuit” for “Court of Customs and Patent Appeals”

   Source evidence

   Code amendment note
   Pub. L. 97–164 substituted “Court of Appeals for the Federal Circuit” for “Court of Customs and Patent Appeals”.

   Enacted provision · exact public law section
   (7) Sections 141 through 146 of title 35, United States Code.

4. 1984

   Technical Amendments to the Federal Courts Improvement Act of 1982

   Pub. L. 98–620 title IV § 414(a) · 98 Stat. 3335

   1. Substituted · 35 U.S.C. § 143

      Pub. L. 98–620 substituted provisions requiring the Commissioner to transmit to the court a certified list of the documents comprising the record in the Patent and Trademark Office, with respect to an appeal described in section 142 of this title, for provision which required the Commissioner to transmit to the court certified copies of all the necessary original papers and evidence in the case specified by the appellant and the appellee

   2. Inserted · 35 U.S.C. § 143

      Pub. L. 98–620 inserted provision that the court may request that the Commissioner forward the original or certified copies of such documents during the pendency of the appeal

   Source evidence

   Code amendment note
   Pub. L. 98–620 substituted provisions requiring the Commissioner to transmit to the court a certified list of the documents comprising the record in the Patent and Trademark Office, with respect to an appeal described in section 142 of this title, for provision which required the Commissioner to transmit to the court certified copies of all the necessary original papers and evidence in the case specified by the appellant and the appellee, and inserted provision that the court may request that the Commissioner forward the original or certified copies of such documents during the pendency of the appeal.

   Enacted provision · exact public law section
   (a) Sections 142, 143, and 144 of title 35, United States Code, are amended to read as follows: “§ 142. Notice of appeal “When an appeal is taken to the United States Court of Appeals for the Federal Circuit, the appellant shall file in the Patent and Trademark Office a written notice of appeal directed to the Commissioner, within such time after the date of the decision from which the appeal is taken as the Commissioner prescribes, but in no case less than 60 days after that date. “§ 143. Proceedings on appeal “With respect to an appeal described in section 142 of this title, the Commissioner shall transmit to the United States Court of Appeals for the Federal Circuit a certified list of the documents comprising the record in the Patent and Trademark Office. The court may request that the Commissioner forward the original or certified copies of such documents during pendency of the appeal. In an ex parte case, the Commissioner shall submit to the court in writing the grounds for the decision of the Patent and Trademark Office, addressing all the issues involved in the appeal. The court shall, before hearing an appeal, give notice of the time and place of the hearing to the Commissioner and the parties in the appeal. “§ 144. Decision on appeal “The United States Court of Appeals for the Federal Circuit shall review the decision from which an appeal is taken on the record before the Patent and Trademark Office. Upon its determination the court shall issue to the Commissioner its mandate and opinion, which shall be entered of record in the Patent and Trademark Office and shall govern the further proceedings in the case.”.

5. 1999

   District of Columbia Appropriations Act, 2000

   Pub. L. 106–113 § 1000(a)(9)(tIV)(s4732)(a)(10)(A) · 113 Stat. 1501

   1. Amended · 35 U.S.C. § 143

      Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as amended by Pub. L. 107–273, § 13206(b)(1)(B)

   2. Substituted · 35 U.S.C. § 143

      Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as substituted “Director” for “Commissioner” the first, second, and fourth places appearing

   Source evidence

   Code amendment note
   Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as amended by Pub. L. 107–273, § 13206(b)(1)(B), substituted “Director” for “Commissioner” the first, second, and fourth places appearing.

6. 1999

   District of Columbia Appropriations Act, 2000

   Pub. L. 106–113 § 1000(a)(9)(tIV)(s4605)(d) · 113 Stat. 1501

   Amended · 35 U.S.C. § 143

   Pub. L. 106–113, § 1000(a)(9) [title IV, § 4605(d)], amended third sentence generally. Prior to amendment, third sentence read as follows: “In an ex parte case, the Commissioner shall submit to the court in writing the grounds for the decision of the Patent and Trademark Office, addressing all the issues involved in the appeal.”

   Target inherited from the preceding amendment note.

   Source evidence

   Code amendment note
   Pub. L. 106–113, § 1000(a)(9) [title IV, § 4605(d)], amended third sentence generally. Prior to amendment, third sentence read as follows: “In an ex parte case, the Commissioner shall submit to the court in writing the grounds for the decision of the Patent and Trademark Office, addressing all the issues involved in the appeal.”

7. 2002

   Intellectual Property and High Technology Technical Amendments Act of 2002

   Pub. L. 107–273 § 13206(b)(1)(B) · 116 Stat. 1758

   Changed · 35 U.S.C. § 143

   Pub. L. 107–273, § 13206(b)(1)(B), made technical correction to directory language of Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)]. See 1999 Amendment note below

   Source evidence

   Code amendment note
   Pub. L. 107–273, § 13206(b)(1)(B), made technical correction to directory language of Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)]. See 1999 Amendment note below.

   Enacted provision · exact public law section
   (B) in paragraph (10)(A), by inserting after “title 35, United States Code,” the following: “other than sections 1 through 6 (as amended by chapter 1 of this subtitle),”.

8. 2002

   Intellectual Property and High Technology Technical Amendments Act of 2002

   Pub. L. 107–273 § 13202(b)(2) · 116 Stat. 1758

   1. Amended · 35 U.S.C. § 143

      Pub. L. 107–273, § 13202(b)(2), amended third sentence generally

   2. Added · 35 U.S.C. § 143

      Pub. L. 107–273, § 13202(b)(2), added fourth sentence identical to existing fourth (now fifth) sentence. Prior to amendment, third sentence read as follows: “In any reexamination case, the Director shall submit to the court in writing the grounds for the decision of the Patent and Trademark Office, addressing all the issues involved in the appeal.”

   Target inherited from the preceding amendment note.

   Source evidence

   Code amendment note
   Pub. L. 107–273, § 13202(b)(2), amended third sentence generally and added fourth sentence identical to existing fourth (now fifth) sentence. Prior to amendment, third sentence read as follows: “In any reexamination case, the Director shall submit to the court in writing the grounds for the decision of the Patent and Trademark Office, addressing all the issues involved in the appeal.”

   Enacted provision · exact public law section
   (2) Proceeding on appeal.— Section 143 of title 35, United States Code, is amended by amending the third sentence to read as follows: “In an ex parte case or any reexamination case, the Director shall submit to the court in writing the grounds for the decision of the Patent and Trademark Office, addressing all the issues involved in the appeal. The court shall, before hearing an appeal, give notice of the time and place of the hearing to the Director and the parties in the appeal.”

9. 2011

   Pub. L. 112–29 § 20(j) · 125 Stat. 314

   Struck · 35 U.S.C. § 143

   Pub. L. 112–29, § 20(j), struck out “of this title” after “142”

   Source evidence

   Code amendment note
   Pub. L. 112–29, § 20(j), struck out “of this title” after “142”.

   Enacted provision · exact public law section
   (j) Unnecessary References.— (1) In general.— Title 35, 35 USC 2, 12, 32, 41, 103, 104, 111, 119–123, 132, 135, 143, 145, 146, 154, 157, 162, 172, 182–186, 207, 210, 257, 267. United States Code, is amended by striking “of this title” each place that term appears. (2) Exception.— The amendment made by paragraph (1) shall not apply to the use of such term in the following sections of title 35, United States Code: (A) Section 1(c). (B) Section 101. (C) Subsections (a) and (b) of section 105. (D) The first instance of the use of such term in section 111(b)(8). (E) Section 161. (F) Section 164. (G) Section 171. (H) Section 251(c), as so designated by this section. (I) Section 261. (J) Subsections (g) and (h) of section 271. (K) Section 287(b)(1). (L) Section 289. (M) The first instance of the use of such term in section 375(a).

   Effective date note
   Amendment by section 7(c)(3) 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. Amendment by section 20(j) 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, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title.

10. 2011

    Pub. L. 112–29 § 7(c)(3) · 125 Stat. 314

    1. Substituted · 35 U.S.C. § 143

       Pub. L. 112–29, § 7(c)(3), substituted “In an ex parte case, the Director shall submit to the court in writing the grounds for the decision of the Patent and Trademark Office, addressing all of the issues raised in the appeal. The Director shall have the right to intervene in an appeal from a decision entered by the Patent Trial and Appeal Board in a derivation proceeding under section 135 or in an inter partes or post-grant review under chapter 31 or 32.” for “In an ex parte case or any reexamination case, the Director shall submit to the court in writing the grounds for the decision of the Patent and Trademark Office, addressing all the issues involved in the appeal.”

    2. Struck · 35 U.S.C. § 143

       Pub. L. 112–29, § 7(c)(3), struck out second occurrence of “The court shall, before hearing an appeal, give notice of the time and place of the hearing to the Director and the parties in the appeal.” at the end

    Target inherited from the preceding amendment note.

    Source evidence

    Code amendment note
    Pub. L. 112–29, § 7(c)(3), substituted “In an ex parte case, the Director shall submit to the court in writing the grounds for the decision of the Patent and Trademark Office, addressing all of the issues raised in the appeal. The Director shall have the right to intervene in an appeal from a decision entered by the Patent Trial and Appeal Board in a derivation proceeding under section 135 or in an inter partes or post-grant review under chapter 31 or 32.” for “In an ex parte case or any reexamination case, the Director shall submit to the court in writing the grounds for the decision of the Patent and Trademark Office, addressing all the issues involved in the appeal.” and struck out second occurrence of “The court shall, before hearing an appeal, give notice of the time and place of the hearing to the Director and the parties in the appeal.” at the end.

    Enacted provision · exact public law section
    (3) Proceedings on appeal.— Section 143 of title 35, United States Code, is amended— (A) by striking the third sentence and inserting the following: “In an ex parte case, the Director shall submit to the court in writing the grounds for the decision of the Patent and Trademark Office, addressing all of the issues raised in the appeal. The Director shall have the right to intervene in an appeal from a decision entered by the Patent Trial and Appeal Board in a derivation proceeding under section 135 or in an inter partes or post-grant review under chapter 31 or 32.”; and (B) by striking the last sentence.

    Effective date note
    Amendment by section 7(c)(3) 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. Amendment by section 20(j) 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, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title.

10 of 14 references resolved to an enrolled provision · 4 partial