904    Access To Record During Appeal

904.01    Access During Appeal To Federal Circuit

During an appeal to the United States Court of Appeals for the Federal Circuit from a decision of the Board in an inter partes case, the USPTO will retain the record of the case. However, when it deems necessary, the Federal Circuit may, on motion or sua sponte, order transmission (via the Office of the Solicitor) of the original or certified copies of the record, or portions thereof, or the physical exhibits, at any time during the pendency of the appeal. [ Note 1.]

During an appeal to the Federal Circuit from a decision of the Board in an ex parte case, the subject application file is retained by the USPTO.

Non confidential papers filed with the Board may be viewed online at any time through the publicly available TTABVUE system, accessible at www.ttabvue.uspto.gov/ttabvue. The TTABVUE database contains most Board proceedings since 2001. You may call the Board to arrange for inspection of older, non-confidential Board files. For further information regarding the inspection and copying of older paper files, see TBMP § 120.01.

Any portions of the record that are subject to a protective order may be inspected and copied only in accordance with the terms of the protective order, unless the Federal Circuit amends, modifies, or annuls the protective order, in which case access by a party, or its attorney or other authorized representative, to the record will be governed by the Court's order. [ Note 2.]

NOTES:

 1.   Trademark Act § 21(a)(3), 15 U.S.C. § 1071(a)(3); Fed. Cir. R. 17(a).

 2.   Fed. Cir. R. 17(d) and 17(e).

904.02    Access During Review By Civil Action

During a civil action seeking review of a decision of the Board in an inter partes case, the Board retains the original USPTO record of the case. The Board will release the original record for submission (via the Office of the Solicitor) to the court in which the civil action is pending only upon order of the court. [Note 1.]

During a civil action seeking review of a decision of the Board in an ex parte case, the subject application file is retained by the USPTO. The USPTO files a certified copy of the administrative record with the court.

Non confidential papers filed with the Board may be viewed online at any time through the publicly available TTABVUE system, accessible at www.ttabvue.uspto.gov/ttabvue. The TTABVUE database contains most Board proceedings since 2001. You may call the Board to arrange for inspection of older, non-confidential TTAB files. For further information regarding the inspection and copying of older paper files, see TBMP § 120.01.

Any portions of the record which are subject to a protective order may be inspected and copied only in accordance with the terms of the protective order, unless the court amends, modifies, or annuls the protective order, in which case access by a party, or its attorney or other authorized representative, to the record will be governed by the court's order.

1. See 15 U.S.C. § 1071(b)(3). ("[T]he record in the Patent and Trademark Office shall be admitted on motion of any party, upon such terms and conditions as to costs, expenses ... as the court imposes. ...")