17 Pages Posted: 8 Sep 2010 Last revised: 7 Dec 2014
Date Written: September 5, 2010
Judicial review of U.S. Patent and Trademark Office (PTO) decisions is complex. One source of complexity is that, as in the case of Copyright Office decisions, courts review both collaterally and directly.
Direct review occurs when unhappy applicants challenge the agency. Collateral review occurs when favorable action is challenged by alleged infringers. Ignoring jurisdictionally straight-forward collateral review, this article examines jurisdictional options for direct review of PTO decisions. It is a lightly edited version of Direct Review of PTO Decisions: Jurisdictional Propsals, 42 Idea 537 (2002), published 20 years after creation of the Federal Circuit.
The article proposes elimination of a jurisdictional limitation that has long confounded unwary appellants, appellees and courts. That it continues to do so seems aptly illustrated by Fred Beverages, Inc. v. Fred's Capital Management Co., 605 F.3d 963 (Fed. Cir. 2010). There, non-final action by the PTO Trademark Trial and Appeals Board, properly subject to intramural review, was reversed in an opinion that addressed neither of those issues and failed fully to consider the court's appellate jurisdiction.
Keywords: administrative review, statutory review, nonstatutory review, Patent and Trademark Office, patent appeals, trademark appeals
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