Appealing a PTAB Decision: The Electronic Filing Route

See the primary source.

The United States Patent and Trademark Office revised how a notice of appeal to the United States Court of Appeals for the Federal Circuit, a notice of election, and a request for extension of time must be filed with the Director, in a final rule cited as 89 FR 22084. The rule binds parties seeking judicial review of patent and trademark agency decisions under 37 CFR Part 2 and 37 CFR Part 90. It is effective on March 29, 2024.

What is in force now?

The filing route is already the live route. The DATES paragraph states that this rule is effective on March 29, 2024, the same day it was published. A firm that still mails the Director's copy to the old hand-delivery address as its default is running the superseded procedure.

Between September 1, 2023 and September 1, 2026, the 11 agencies in this index published the 1086 in-scope rules this post is drawn from. That set is a point-in-time index, not a docket that updates itself.

The Commerce Department issued the action under RIN 0651-AD78. It amends 37 CFR Part 2 (trademark) and 37 CFR Part 90 (judicial review of Patent Trial and Appeal Board decisions).

A practitioner appealing a PTAB or TTAB decision after March 29, 2024 files the Office copy on this route. The rule does not say the statutory deadline to seek judicial review moved. The rule does not say the Federal Circuit will accept the Office email as the court's filing.

Intake and calendaring failures that already lose a notice in a paper file — the same class of miss described in law-firm client intake automation — are more expensive here, because the Director's copy and the court's copy are different filings.

What does the rule require?

According to the rule abstract, the USPTO issues this final rule to incorporate changes to the patent and trademark rules regarding judicial review of agency decisions, in particular how a notice of appeal to the United States Court of Appeals for the Federal Circuit, a notice of election to proceed by civil action in district court, and a request for extension of time for filing a notice of appeal or commencing a civil action must be filed. This final rule states that a notice of appeal, notice of election, and a request for extension of time for filing a notice of appeal or commencing a civil action must be filed with the Director of the USPTO by email, and in the event a request cannot be filed by email, it may be filed by Priority Mail Express.

The electronic route covers the copy served on the Office. The court's own filing requirements are separate. Nothing in 89 FR 22084 purports to file the appeal in the Federal Circuit or to commence the civil action in district court.

The patent-side text in revised the applicable section(a)(1) requires that, in all appeals, the notice of appeal required by 35 U.S.C. 142 must be filed with the Director by electronic mail to the email address indicated on the United States Patent and Trademark Office's web page for the Office of the General Counsel. The electronically submitted notice is accorded a receipt date, which is the date in Eastern Time when the correspondence is received in the Office, regardless of whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. If there is some circumstance in which electronic mail cannot be used, submission may be by Priority Mail Express to the Office of the Solicitor, United States Patent and Trademark Office, Mail Stop 8, P.O. Box the published mailbox, Alexandria, Virginia the published ZIP-the published mailbox.

A copy of the notice of appeal must also be filed with the Patent Trial and Appeal Board in the appropriate manner provided in §the applicable section(a), the applicable section(b), or the applicable section(b), as the applicable section(a)(1)(ii) states. Emailing the Director does not complete the Board copy.

Notices of election under 35 U.S.C. 141(d) follow the same Director-email route, with the same Eastern Time receipt rule and the same Priority Mail Express fallback to Mail Stop 8, as revised the applicable section(b)(1) provides. Extension requests under the applicable section(c)(2) use the same address pair.

On the trademark side, revised the applicable section uses the same email address on the Office of the General Counsel web page, the same Eastern Time receipt rule, and the same Priority Mail Express (or means at least as fast and reliable) fallback to Mail Stop 8. A copy of an extension request should also be filed with the Trademark Trial and Appeal Board, as the applicable section(e)(2)(ii) states.

Prior to this final rule, appellants were required to file by mail or by delivery by hand to the address provided at the former Director-mail regulation. That default is what the rule replaced.

The rule does not say the time to appeal under the applicable section got longer because email is faster. The Director, or the Director's designee, may extend the time for filing an appeal or commencing a civil action upon written request, as the revised the applicable section(c)(1) text provides; that is an extension request, not an automatic extra period. The rule does not say a dollar filing fee for the Director's copy.

Receipt date is Eastern Time when the Office receives the email, including Saturday, Sunday, or a Federal holiday within the District of Columbia, according to the revised sections. A docket that treats "next business day" as the receipt date is not reading the rule.

Where do law firms commonly fall short?

The misses are copy-count misses. The rule does not publish how many notices arrived at the old hand-delivery address after the effective date, and this page does not invent that number.

The first pattern is treating CM/ECF as the only filing. CM/ECF is how the Federal Circuit takes its copy. The Director's copy is email to the Office of the General Counsel address. A notice that exists only in the court's system has not been filed with the Director under the applicable section.

The second pattern is treating the Director email as the Board copy. the applicable section(a)(1)(ii) still requires a copy with the Patent Trial and Appeal Board in the manner the Board rules provide. Patent Center is the USPTO electronic filing channel practitioners already use for Board and prosecution papers; it is not the OGC email inbox.

The third pattern is using the fallback as the default. Priority Mail Express to Mail Stop 8 is available if electronic mail cannot be used. A standing instruction to "mail it to Alexandria" is the procedure the rule replaced.

The fourth pattern is calendaring the receipt date as the next business day. The rule accords a receipt date on Saturday, Sunday, or a Federal holiday if that is when the Office received the email in Eastern Time.

The fifth pattern is mixing patent and trademark copies: using a trademark Board channel for a PTAB appeal, or skipping the TTAB copy on a trademark extension request. the applicable section(e)(2)(ii) is specific to the trademark extension request.

These are docket-integrity failures of the same family as a missed conflict or a lost intake packet. See conflict-check software comparison and law-firm billing automation for how firms already try to keep a named owner on each matter event. An appeal notice without a named owner for each copy is an event without an owner.

What self-audit can a firm run now?

A firm with any open PTAB or TTAB matter that might go up can run this check now. The rule does not prescribe the checklist; it prescribes the addresses.

1. Inventory every matter with a live appeal clock under the applicable section or the applicable section.

2. Replace any template that still lists hand delivery to the the former Director-mail regulation address as the Director route.

3. Put the Office of the General Counsel email address from the USPTO web page into the template. The rule points to that page rather than printing a frozen inbox in the CFR text.

4. Add a Board/TTAB copy step that is separate from the Director email.

5. Add a court-filing step that is separate from both Office copies.

6. Calendar receipt in Eastern Time, including weekend and holiday receipt.

7. Keep Mail Stop 8, P.O. Box the published mailbox, Alexandria, Virginia the published ZIP-the published mailbox as fallback only for the circumstance in which email cannot be used.

Patent Center is the USPTO system practitioners use to file and manage patent papers, including the Board copy in the manner the Board rules provide. It does not send the Director's copy to the Office of the General Counsel email address. CM/ECF is the federal courts' case-management and electronic-filing system, including for the Federal Circuit. A notice docketed in CM/ECF is the court's copy, not the Director's copy under the applicable section.

A related control is the same named-owner pattern used in client-intake automation: one matter, three copies (Director, Board, court), three completion stamps. The rule does not say two of three is enough.

How can the obligation be operationalized at volume?

Reconcile the matter docket against the change: each open matter maps to the filing, appearance, or fee the rule now requires and its due date. US Tech Automations flags matters still running on the superseded procedure and routes the correction to the responsible attorney.

The superseded procedure here is mail or hand delivery to the old address as the ordinary Director route. US Tech Automations can flag a matter whose appeal template still cites that route, or whose docket has a court filing with no Director-email stamp, and route the correction to the responsible attorney. It does not file the notice and it does not compute the appeal deadline under the applicable section.

What can be automated is the mismatch against the March 29, 2024 route. What needs a human is whether email cannot be used, whether an extension request is justified, and whether the court's separate requirements are met. US Tech Automations does not make those calls.

Key Takeaways

• The USPTO filing-route rule at 89 FR 22084, RIN 0651-AD78, is effective March 29, 2024, and amends 37 CFR Part 2 and 37 CFR Part 90.

• A notice of appeal, notice of election, and extension request must be filed with the Director by email to the Office of the General Counsel web-page address; Priority Mail Express to Mail Stop 8 is the fallback if email cannot be used.

• Receipt is the Eastern Time date of Office receipt, including Saturday, Sunday, or a Federal holiday within the District of Columbia.

• A Board or TTAB copy remains a separate filing; the court's own filing requirements remain separate.

• The rule does not say the time to appeal moved, and it does not say a dollar fee for the Director's copy.

What questions come up in practice?

What changed on March 29, 2024?

The final rule replaced mail or hand delivery to the the former Director-mail regulation address with email to the Director, with Priority Mail Express to Mail Stop 8 only if email cannot be used.

Does emailing the Director file the appeal in the Federal Circuit?

No. The electronic route covers the copy served on the Office. The court's own filing requirements are separate, and the rule does not say otherwise.

Is a copy still due at the Board?

Yes. the applicable section(a)(1)(ii) requires a copy of the notice of appeal to be filed with the Patent Trial and Appeal Board in the manner provided in §the applicable section(a), the applicable section(b), or the applicable section(b).

What if the email is received on a Saturday?

The revised text accords a receipt date that is the date in Eastern Time when the correspondence is received in the Office, regardless of whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia.

Where does Priority Mail Express go?

To the Office of the Solicitor, United States Patent and Trademark Office, Mail Stop 8, P.O. Box the published mailbox, Alexandria, Virginia the published ZIP-the published mailbox, and only if electronic mail cannot be used, as the rule states.

Where is the official text?

The primary source is 89 FR 22084, document number 2024-06659, RIN 0651-AD78, published March 29, 2024. Current text is in 37 CFR Part 2 and 37 CFR Part 90. Source: Federal Register / eCFR.

Disclaimer

This article is for informational purposes only. It is not legal or tax advice and does not create an attorney-client relationship. Appeal deadlines depend on the decision being reviewed. Consult a qualified professional before acting.

Every date, citation, RIN, CFR reference, and figure in these posts is copied verbatim from the Federal Register and eCFR as of the snapshot date. Nothing is estimated, modeled, or extrapolated. This is not legal or tax advice.

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Source: Federal Register (89 FR 22084); current text via eCFR, 37 CFR Part 2 and 37 CFR Part 90.

Last reviewed: March 29, 2024

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