01/13/20

PTAB Practice Tips: Comparing Appealable and Petitionable Matters


PTAB Practice Tips: Comparing Appealable and Petitionable Matters

James A. Worth

Practitioners considering an appeal to the Board should differentiate petitionable matters from appealable matters as early as possible to ensure that their arguments go to the right decision maker, and because petitionable matters have their own time clock for limitations. In an appeal, the Board is only permitted to consider the merits of an Examiner’s rejection. The Board is not permitted to review an Examiner’s other, procedural actions because the process of examination is within the exclusive purview of the Director, and is delegated by the Director to the Examiner. Thus, an applicant’s petition is reviewed by the Director, rather than the Board.

This article addresses the history of the distinction between appealable and petitionable matters, explains the modern codification of the law, and discusses examples of petitionable matters and other petitions.

101 J. Pat. & Trademark Off. Soc’y 188 (2019)

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