902.08 Special Provisions for Ex Parte Cases
Trademark Act § 21(a)(3), 15 U.S.C. § 1071(a)(3) In an ex parte case, the Director shall submit to that court a brief explaining the grounds for the decision of the United States Patent and Trademark Office, addressing all the issues involved in the appeal. The court shall, before hearing an appeal, give notice of the time and place of the hearing to the Director and the parties in the appeal.
37 C.F.R. § 2.145(b)(1) Any applicant or registrant in an ex parte case who takes an appeal to the United States Court of Appeals for the Federal Circuit waives any right to proceed under Section 21(b) of the Act.
If an applicant in an ex parte case takes an appeal to the United States Court of Appeals for the Federal Circuit from a decision of the Board, the applicant thereby waives its right to proceed by way of civil action under Trademark Act § 21(b), 15 U.S.C. § 1071(b). [ Note 1.]
On appeal to the Federal Circuit in an ex parte case, the Director, via the Office of the Solicitor, files a brief in support of the Board’s decision. [ Note 2.]
Questions regarding the determination of the contents of the appendix pursuant to Fed. Cir. R. 30(b) should be directed to the Office of the Solicitor.
In situations where the original appellee in an appeal of an inter partes case does not appear, the USPTO may move and the Federal Circuit may grant leave for the Director to participate to defend the Board’s decision. In such cases, the Court may substitute the Director as appellee and revise the caption of the appeal to reflect its ex parte nature. [ Note 3.]
NOTES:
1. Trademark Act § 21(a)(1), 15 U.S.C. § 1071(a)(1); 37 C.F.R. § 2.145(b)(1).
2. Trademark Act § 21(a)(3), 15 U.S.C. § 1071(a)(3).
3. In re Bose Corp., 580 F.3d. 1240, 91 USPQ2d 1938, 1939 (Fed. Cir. 2009) (upon motion by Director, USPTO was substituted by Court for appellee that did not appear).