Chapter 4. Appeals

• Author: Erika Harmon Arner and Joseph E. Palys
• Pages: 63-68

The statutes provide for direct appeal from the Patent Trial and Appeals

Board (PTAB or Board) to the Federal Circuit in many circumstances, such

as a nal written decision,

1

but also expressly prohibit appeal in certain

situations, such as following a decision by the Board on whether to insti-

tute a PTAB trial.2 In the early days of PTAB trials, none has progressed

to the appeal stage, but many appeals are likely during the second year of

PTAB trials as parties and the Board look to answer the many issues of rst

impression that accompany a new statute.

I. Can You Appeal . . . ?

A. Decisions to Institute

No. A determination on whether to institute a trial is nal and nonappeal-

able.3 While a petitioner can request that a panel rehear the decision not to

institute, the determination by the panel is nonappealable.4

The Board’s decision to institute PTAB trials has been collaterally attacked

in actions led at the U.S. District Court for the Eastern District of Virginia,

1. 35 U.S.C. §§319, 329.

2. 35 U.S.C. §§314(d), 324(d).

3. Id.

4. Id. See also 37 C.F.R. §42.4(a) (2012) (“The Board institutes the trial on behalf of

the Director.”).

63

Chapter 4

Appeals

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