Treatment of Court and Patent Trial and Appeal Board Decisions Affecting Patent and Trademark Office Policy and Practice

In the event the Patent Trial and Appeal Board (Board) or court decision

is one that significantly adds to the body of law by, for example, addressing a new legal

or procedural issue, or providing a new interpretation of a prior decision, such a decision

may result in a United States Patent and Trademark Office (USPTO) memorandum pointing out

the significance of the decision to the examination process.

When any examiner or supervisor in the Patent Examining Corps (Corps)

concludes that a recent decision of the Board or a court affects existing USPTO policy or

practice, the matter should be brought to the attention of the appropriate TC Director

through normal chain-of-command procedures.

When the TC Director believes that guidance to the Corps is warranted as a

result of a decision, the TC Director should consult with the Deputy Commissioner for

Patents who oversees the Office of Petitions and provide a draft of the guidance that is

recommended as appropriate under the circumstances. The Deputy Commissioner for Patents who

oversees the Office of Petitions will then consult appropriate Office officials, as

necessary, to formulate a recommendation to the Commissioner for Patents on the policy

implications of the decision's opinion.

It may be necessary for the Director, General Counsel, Solicitor, Chief

Administrative Patent Judge, Commissioner for Patents, one or more Deputy Commissioners for

Patents and TC Director making the recommendation to meet to review and discuss the policy

ramifications of the decision's opinion and recommended guidance to enable the Director to

determine how the USPTO will proceed.

Communication of the determination of the policy implications of the court

or Board decision will normally take place by either notice in the

Official

Gazette

and/or via memorandum to USPTO personnel

ctor making the recommendation to meet to review and discuss the policy

ramifications of the decision's opinion and recommended guidance to enable the Director to

determine how the USPTO will proceed.

Communication of the determination of the policy implications of the court

or Board decision will normally take place by either notice in the

Official

Gazette

and/or via memorandum to USPTO personnel. Ultimately, the policy

implications of the decision will be officially incorporated into the Manual of Patent

Examining Procedure and Office of Patent Training curriculum materials during the next

update cycle for these reference materials.

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