The Burdens of Proof and Persuasion in a 35 USC § 146 Action

 by Charles L. Gholz and John F. Presper



While 35 USC 146 actions are often loosely referred to as permitting "de novo" review of the Patent Trial and Appeal Board 's decisions, it has been pointed out that it is more accurate to refer to 35 USC 146 actions as permitting "quasi-de-novo" review of the board's decisions:

The phrase quasi-de-novo is used advisedly because[,] even though new evidence may be introduced[,] the decision of the...[board] may only be reversed if, after viewing the evidence, the district court is satisfied to a thorough conviction that the....[board] was in error.

Neither party to a 35 USC 146 [an annotated version of this statute is available to subscribers]   proceeding is starting from a clean slate. Rather, the action is for review of a decision by a specialized administrative agency the members of which are, by statute, presumed to have relevant expertise. Hence, to the extent that either party is trying to get the court to disagree with a holding by the board, it is fighting an uphill battle. But, how steep is the incline of that hill, and does the steepness vary depending on the issue in play?


The foundational opinion in the extensive body of opinions on this subject is Morgan v. Daniels, 153 U.S. 120, 14 S. Ct. 772 (1894) (opinion by Justice Brewer for a unanimous court) [an enhanced version of this opinion is available to subscribers]. In that case, the Supreme Court said that:

Upon principle and authority, therefore, it must be laid down as a rule that[,] where the question decided in the Patent Office is one between contesting parties as to priority of invention, the decision there made must be accepted as controlling upon that question of fact in any subsequent suit between the same parties, unless the contrary is established by testimony which in character and amount carries thorough conviction.

Two questions immediately suggest themselves. First, is the holding limited to questions of fact concerning priority of invention? Second, what was the principle and what were the authorities upon which the Supremes relied? [footnotes omitted]

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Charles L. Gholz is a Partner in Oblon, Spivak, McClelland, Maier & Neustadt, LLP; Alexandria, Virginia. His direct dial telephone number is 703/412-6485, and his email address is

John F. Presper is a Senior Associate in Oblon, Spivak, McClelland, Maier & Neustadt, LLP; Alexandria, Virginia. His direct dial telephone number is 703/412-3536, and his email address is

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