The prerequisite to requesting judicial review of the PTO’s rejection of a patent application under the proscribed statutory provisions is the exhaustion of all remedies before the PTO by procuring (1) a “decision from the Board” or (2) “final agency action.” An advisory action is not a final agency action in this sense because several remedial steps may still be taken by the applicant to continue examination of his or her application.
Background / Facts: This appeal arises out of an initial rejection of a patent application filed by Mr. Fleming and a subsequent advisory action maintaining that rejection. Rather than filing within the required time period identified in the advisory action (1) an amendment, affidavit, or other evidence, to place the application in condition for allowance, (2) a notice of appeal to the board of patent appeals, or (3) a request for continued examination, Mr. Fleming sued the PTO in federal court to seek review of the PTO’s rejection of his patent application.
Issue(s): Whether federal courts have jurisdiction to review the PTO’s rejection of a patent application at the advisory action stage.
Holding(s): No. With respect to the PTO, Congress has expressly waived sovereign immunity in only limited circumstances via a discrete number of statutory provisions. Namely, “[u]nder 35 U.S.C. § 141, a patent applicant who is dissatisfied with the final decision in an appeal to the Patent Trial and Appeal Board (‘Board’) under 35 U.S.C. § 134(a) may appeal the Board’s decision directly to the Federal Circuit. Alternately, the dissatisfied patent applicant may choose to ‘have remedy by civil action against the Director in the United States District Court for the Eastern District of Virginia.’ 35 U.S.C. § 145. To the extent that these statutory review provisions are inadequate, an action against the PTO may be brought under the Administrative Procedure Act if the patent applicant demonstrates receipt of a ‘final agency action’ under 5 U.S.C. § 704.” In this case, Mr. Fleming did not exhaust his administrative remedies with regard to his patent application. He neither obtained a “decision from the Board” nor “final agency action,” because he did not “appeal from the decision of the primary examiner to the … Board” under 35 U.S.C. § 134(a) upon receipt of the advisory action. “The unrefuted affidavit submitted by the PTO defendants establishes that Mr. Fleming did not pursue any of the options presented to him in the Advisory Action.” Mr. Fleming’s lack of action in the PTO prior to instituting a civil lawsuit arising from the rejection of his patent application is therefore untimely.