Monday, December 3, 2012

Supreme Court Preserves District Court Challenges to USPTO Decisions

In a recent decision, the Supreme Court unanimously decided that the ability of a patent applicant to present evidence to a District Court regarding a decision of the U.S. Patent and Trademark Office (USPTO) is limited only by the general rules regarding admissibility of evidence. The Court also ruled that a District Court should review USPTO decisions where new evidence is presented de novo. A contrary view was advanced by the USPTO.

 If a patent examiner twice rejects one or more claims in a patent applicant, the applicant has the right to file an administrative appeal within the USPTO. If the Appeal Board denies the application, the applicant has a choice of two options: 1) appeal the Board's decision to the U.S. Court of Appeals for the Federal Circuit (CAFC) under 35 U.S.C. § 141 or 2) file a civil action against the USPTO Director in District Court under § 145. As with any District Court case, either party may take an appeal from the District Court decision on the § 145 action to the CAFC.

Because either option is likely to come before the CAFC, the main reason for taking a case first to the District Court would be the opportunity to present evidence to the court. Applicant Hyatt's patent application was rejected for failure to comply with the written description requirement. Hyatt submitted a new declaration to the court to overcome the rejection, but the court refused to admit it because it hadn't been submitted to the USPTO during examination.

The Supreme Court's decision preserves District Court challenges as a meaningful option rather than rendering them merely superfluous advisory opinions to be reviewed by the Court of Appeals.

2 comments:

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