1. April 18, 2012 Supreme Court Rules That a District Court Must Consider New
Evidence on an Appeal of a Rejected Patent Application
Intellectual Property Client Alert
In its second significant patent decision this week, the Supreme Court ruled that if new
This Alert provides only evidence is presented on a disputed question of fact at District Court, the District Court must
general information and
make de novo factual findings based on the new evidence and the administrative record
before the U.S. Patent and Trademark Office (PTO). The decision in Kappos v. Hyatt is
should not be relied upon as available here.
legal advice. This Alert may
be considered attorney A patent applicant has the option to appeal a refusal of a patent application by the PTO in a
District Court under 35 U.S.C. § 145. In this case, Hyatt was refused a patent by the PTO,
advertising under court and
which he then appealed to District Court. Hyatt presented new evidence to support
bar rules in certain patentability. The PTO argued that new evidence can only be presented at the District Court if
jurisdictions. it could not reasonably have been presented during the PTO proceedings as this would
provide incentive to applicants to withhold evidence from the PTO. The Federal Circuit
rejected the PTO’s argument, finding that the presentation of new evidence requires the
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District Court to make de novo factual findings that consider both the new evidence and the
your Patton Boggs LLP prosecution history.
attorney or the authors listed
below.
The Supreme Court unanimously affirmed the Federal Circuit's decision, stating that “there
are no limitations on a patent applicant's ability to introduce new evidence in a § 145
proceeding beyond those already present in the Federal Rules of Evidence and the Federal
Scott A. Chambers, Ph.D.
schambers@pattonboggs.com
Rules of Civil Procedure.” The decision thus provides inventors whose applications were
rejected to appeal to a court and provide new evidence that was not available to the PTO.
Matthew J. Laskoski
mlaskoski@pattonboggs.com Under the America Invents Act adopted last year, the required forum for all § 145 appeals has
been changed from the U.S. District Court for the District of Columbia to the Eastern District
Lacy L. Kolo, Ph.D. of Virginia.
lkolo@pattonboggs.com
WWW.PATTONBOGGS.COM
This Alert provides only general information and should not be relied upon as legal advice. This Alert may also be considered
attorney advertising under court and bar rules in certain jurisdictions.
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