On April 10, inventor Gilbert Hyatt and the American Association for Equitable Treatment (AAET) filed a petition for writ of certiorari with the U.S. Supreme Court asking the Court to review a Federal Circuit case that struck down an Administrative Procedures Act (APA) claim brought by the petitioners. If the Supreme Court grants certiorari, they will determine whether a section of the U.S. Patent and Trademark Office’s (USPTO) Manual of Patent Examining Procedure (MPEP) authorizing examiners to reopen patent prosecution and block a patent applicant’s appeal after a second rejection violates that patent applicant’s statutory right of appeal under the Patent Act. The particular section of patent examination procedure at issue in this appeal is MPEP § 1207.04, titled Reopening of Prosecution After Appeal. This section was adopted by the USPTO in August 2005. Prior to this, patent examiners could propose reopening prosecution to patent applicants who had appealed a decision after a second rejection and patent applicants were free to disregard this proposal. In Gil Hyatt’s case, Section 1207.04 was used by patent examiners to force the reopening of prosecution, ending 80 appeals of examiner decisions to the Patent Trial and Appeal Board (PTAB).
Recent Posts
- SCOTUS Denies Challenges to Section 101 Test, Trademark Domicile Rules and Obviousness-Type Double-Patenting Analysis
- After Loper Bright, the USPTO Should Reopen the Comment Period for FY 2025-2029 Patent Fees
- Dissecting the USPTO’s Update to Eligibility Guidance for AI Inventions
- Other Barks & Bites for Friday, October 4: Meta Hit with Class Action Copyright Infringement Lawsuit; Industry Leaders Ask for Clarification on Third-Party Litigation; EUIPO Applauds German Court Ruling on Misleading Invoices
- Patently Strategic Podcast: ITC Proofing Portfolios