11/08/16

In Support of Trademark Trial and Appeal Board Rulemaking: Replacing the Two-Month Time Period With A Sixty-Three Day Time Period

In Support of Trademark Trial and Appeal Board Rulemaking: Replacing the Two-Month Time Period With A Sixty-Three Day Time Period

Alexander Sofocleous

When an appellant is dissatisfied with a decision by the Patent Trial and Appeal Board (“PTAB”) or Trademark Trial and Appeal Board (“TTAB”), the appellant may seek judicial review. Generally, in ex parte patent prosecution or prosecution of an application to register a mark, a dissatisfied appellant may request reopening of prosecution or seek judicial review of a PTAB or TTAB decision affirming or affirming-in-part an examiner’s action. Such PTAB or TTAB decisions occur frequently. Properly calculating the time period for seeking judicial review is critical because being late has consequences.

Previously, the time period for seeking judicial review of ex parte appeal decisions was two months. While calculating a month-based time period for seeking judicial review seems simple, multiple exceptions can complicate the calculation. If the judicial review time period is miscalculated, an appellant risks abandonment.

In 2012, the two-month time period for seeking judicial review of PTAB decisions was replaced with a sixty-three-day time period to simplify the time period calculation by avoiding several exceptions. However, the two-month time period for seeking judicial review of TTAB decisions was not replaced. Since the judicial review time period of TTAB decisions is two months, a practitioner must know the following exceptions: (1) a period including February 28th; (2) a period with an ending month not having the day number of the starting month; and (3) a period wherein the last day falls on either (a) a weekend, (b) a Federal holiday, (c) a postal service interruption or emergency, or (d) an entire-day USPTO closure. Recently, the TTAB published a notice of proposed rulemaking to replace the two-month time period for seeking judicial review of TTAB decisions with a sixty-three day time period, so as to simplify the judicial review time period calculation. Replacing any two-month time period with a sixty-three day time period, or even a nine-week time period, would simplify calculations by avoiding the February 28th exception and the exception for ending months not having the day number of the starting month.

98 J. Pat. & Trademark Off. Soc’y 296(2016)

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