In his petition for writ of certiorari, Gilbert Hyatt asks:
Whether MPEP § 1207.04 violates patent applicants’ statutory right of appeal following a second rejection.
This section of the MPEP allows a patent examiner to “reopen prosecution to enter a new ground of rejection” in response to a patentee filing an appellate brief. Hyatt argues that this approach violates the right to appeal under 35 U.S.C. § 134 and § 6(b). When I previously wrote about the case, I noted a “remarkably parallel” case from 1904 where the Supreme Court authorized mandamus action where the examiner refused to forward cases to the Board. U.S. ex rel. Steinmetz v. Allen, 192 U.S. 543 (1904). The Supreme Court in that case also wryly spells-out the justification for restriction practice — “to obtain more revenue” for the Patent Office.
In its newly filed responsive brief, the USPTO agrees that after having its claims “twice rejected . . . the applicant is entitled to appeal that rejection. . . [However], contrary to petitioners’ assertion, that procedure does not deprive any patent applicant of his right to review by the Board.”
The PTO draws a distinction with Steinmetz because it was related to a refusal to allow an appeal with regard to restriction practice — rather than repeated reopening of prosecution.
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My take here is that the PTO should be able to reopen prosecution when it acts reasonably. A mandamus action or APA lawsuit should be available if the agency acts otherwise.