As described in our previous post, sometimes when a PTO examiner is not giving an applicant the answers he is looking for, and the problem at hand is not something that is appealable to a higher authority, such as the Patent Appeals Board or a Court, it is possible to go over the examiner's head and appeal to his boss, the PTO Commissioner. Unfortunately, this sometimes doesn't work either and it is desirable to find another way when the PTO Commissioner does not cooperate.
So what happens if your petition to the PTO Commissioner is unsuccessful? While it is not entirely clear what you can do after a petition is decided against you, the MPEP (Manual of Patent Examining Procedure) provides some hints as to the next steps. The first issue to resolve is whether the petition decision is a final agency decision or not. Decisions that are NOT final agency decisions include dismissals of petitions, denials of petitions without prejudice, and other interlocutory orders. Any petitions that were delegated to 1) the Office of the Deputy Commissioner for Patent Examination Policy, 2) the Chief Administrative Patent Judge of the BPAI, 3) an Administrative patent Judge, 4) the BPAI, or 5) the Deputy Director of the USPTO are final agency decisions. This is an important distinction when planning to assert judicial review of a petition under the Administrative Procedure Act (APA). Since the USPTO is an agency of the United States Government, it is subject to the APA. Under §704 of the APA, agency action is subject to judicial review only when it is reviewable by statute or a final agency action where there is no other adequate remedy in court. In this case, only those select petitions that are deemed final agency actions can be reviewed under the APA.
So what do you do with the petitions that are denied or dismissed and are not final agency actions? One route is to continue petitioning at the USPTO. For instance, under MPEP §1002.02(c) petitions are decided by a Technology Center Director. If this petition is denied, then it is possible to petition to the Office of the Deputy Commissioner for Patent Examination Policy to review the decision of that Technology Center Director under §1002.02(b). If your petition is denied again as a final agency action, you can then use the APA to bring a claim in the U.S. District Court.
Another option is to petition for a writ of mandamus to the District Court or Federal Circuit Court. In the District Court, the petition is limited to situations where the Director's decision violated a duty owed to the plaintiff and not where the decision was discretionary in nature. 60 Am. Jur. 2d Patents § 468. For example, parties have asserted in a writ of mandamus that the Commissioner’s decision was an abuse of discretion allowing judicial review by the District Court. See Smith v. Mossinghoff, 671 F.2d 533, 538 (D.C. Cir. 1982); Commissariat A L'Energie Atomique v. Watson, 274 F.2d 594, 596 (D.C. Cir. 1960). The US Federal Circuit Court of Appeals may also issue a writ of mandamus for patent cases, but in many cases the Court may not have jurisdiction to review the decision of the Commissioner on petitions. In re Makari, 708 F.2d 709, 711 (Fed. Cir. 1983); see also In re Man Mach. Interface Technologies, LLC, 2014-114, 2014 WL 1426669 (Fed. Cir. Apr. 15, 2014) (denying petition for mandamus because an appeal to the PTAB was made before filing the petition and therefore this is another means of obtaining the desired relief).
In the end, it is important to be aware what stage and who is deciding your petition because these considerations will affect your next move if your petition is not granted. As is clear from the above, it is best to give it your best shot when doing a petition to the Patent Office Commissioner, because your options for proceedings diminish even further after a negative determination from the Office on such a petition.