In a unanimous decision earlier this month, the Supreme Court ruled in Kappos v. Hyatt that a patent applicant has the right to present new evidence when appealing the rejection of their application.
The ruling clarifies the procedures for introducing and evaluating new evidence in support of a denied patent application.
For your reference, a roundup of legal commentary and analysis on the SCOTUS decision:
“In its second significant patent decision this week, the Supreme Court ruled that if new evidence is presented on a disputed question of fact at District Court, the District Court must make de novo factual findings based on the new evidence and the administrative record before the U.S. Patent and Trademark Office.” Read the full update>>
Kappos v. Hyatt – 2012 (McDonnell Boehnen Hulbert & Berghoff LLP)
“That rarest of rara aves issued from the Supreme Court yesterday, an affirmance of a Federal Circuit opinion in Kappos v. Hyatt. Perhaps it is because, as in Stanford v. Roche one of the parties was the government. Or maybe it is because the Office’s position appears to be contrary to the plain meaning of the statute under consideration, 35 U.S.C. § 145. But in an opinion by Justice Thomas (another 9-0 opinion at that), the Court firmly sided with applicant Hyatt regarding both the extent of new evidence that a dissatisfied applicant can produce during a § 145 proceeding and the standard of review to be applied by the district court to such evidence.” Read the full update>>
Patent Applicants Can Submit New Evidence to District Court in Civil Actions (McDermott Will & Emery)
“Patent applicants need not fear that if they fail to bear the financial burden of submitting essentially all possible evidence to the Board, they are foreclosed from using §145 as an effective vehicle for supplementation of the record on appeal. However, in cases where no new evidence is introduced in a §145 procedure, the standard of review will be the same as that which applies in a §141 appeal, i.e., the ‘substantial evidence’ standard. Thus, there is no reason to file a §145 appeal unless the introduction of new evidence is contemplated.” Read the full update>>
Supreme Court Affirmance Benefits Patent Applicants: Allows Introduction of New Evidence on Appeal (Sutherland Asbill & Brennan LLP)
“Although, the Court’s ruling in Kappos v. Hyatt may afford some dissatisfied patent applicants possessing new evidence with a viable recourse for appealing final decisions by the PTO, this decision is unlikely to increase the small number of § 145 actions being filed by dejected applicants. Instead, patent applicants are more likely to submit new evidence for consideration by the PTO by filing a Request for Continued Examination (RCE). The RCE generally will be both faster and less expensive for patent applicants seeking consideration of new evidence by those having ‘special expertise’ at the PTO.” Read the full update>>
Supreme Court Clarifies Scope of 35 USC 145 Proceedings (Ropes & Gray LLP)
“… the decision is consistent with the Court’s decision last term in Microsoft v. i4i, in which the Court acknowledged that if the PTO did not have the opportunity to consider a piece of evidence relevant to an invalidity defense, the PTO’s judgment may ‘lose significant force’ and the presumption of validity may be ‘weakened’ or ‘dissipated.’ Similarly, the Court here acknowledged that a decision by the PTO in the absence of a material piece of evidence may be given less weight than it would otherwise be accorded by a reviewing district court. In neither case, however, does the standard of review alter the established burden of proof.” Read the full update>>
Read the Supreme Court decision: Kappos v. Hyatt
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