by Dennis Crouch
Gilbert P. Hyatt v. Andrei Iancu (Supreme Court 2019)
The following is a fairly typical pattern within the USPTO:
- After final rejection, applicant files a PTAB appeal notice and brief;
- Rather than pursue its side of the appeal, the Examiner withdraws the pending rejections — and then re-opens prosecution with a new set of rejections.
Although few cases go through this more than one cycle. Gilbert Hyatt has long been an exception — both in terms of how he treats the PTO and how he is treated by the PTO.
Going back to the my typical pattern above — note that the Manual of Patent Examination Policy (MPEP) expressly permits cycling by the examiner, although it requires SPE approval:
The examiner may, with approval from the supervisory patent examiner, reopen prosecution to enter a new ground of rejection in response to appellant’s brief.
MPEP § 1207.04.
Hyatt’s petition to the U.S. Supreme Court argues that a patent applicant has a right to appeal — and that this examination cycling violates his statutory rights. In particular, Hyatt points to 35 U.S.C. § 134 and § 6.
134(a). An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal.
6(b). Duties.—The Patent Trial and Appeal Board shall— (1) on written appeal of an applicant, review adverse decisions of examiners upon applications for patents pursuant to section 134(a).
In a remarkably parallel situation from the early 1900’s the U.S. Supreme Court held that mandamus was appropriate where the examiner refused to forward cases to the Board. U.S. ex rel. Steinmetz v. Allen, 192 U.S. 543 (1904).
Thus, Hyatt’s Question Presented:
Whether MPEP § 1207.04 violates patent applicants’ statutory right of appeal following a second rejection.
This is a well presented case and you can read the brief here: [USSCPetitionforWritofCertiorari]