Fitch, Even, Tabin & Flannery LLP: Supreme Court Requires De Novo Review in Civil Actions to Obtain Patent

Fitch, Even, Tabin & Flannery LLP: Supreme Court Requires De Novo Review in Civil Actions to Obtain Patent

By Allen E. Hoover

Today [April 18, 2012], in Kappos v. Hyatt, the U.S. Supreme Court affirmed the Court of Appeals for the Federal Circuit, holding that courts must consider de novo any evidence presented by the appellant in a civil action under 35 U.S.C. § 145.

Under 35 U.S.C. §145, an applicant who loses an appeal before the U.S. Patent and Trademark Office (USPTO) Board of Patent Appeals and Interferences may bring a civil action against the USPTO in federal court to seek to overturn the USPTO's decision. A §145 civil action is the alternative to a direct appeal from the USPTO to the Court of Appeals for the Federal Circuit under 35 U.S.C. § 141. The issue in the case centers on the scope of new evidence the applicant may introduce in a civil action under §145.

Rejecting the USPTO's argument that a more deferential standard of review must apply, the Court reasoned that the USPTO, "no matter how great its authority or expertise, cannot account for evidence that it has never seen. Consequently, the district court must make its own findings de novo. . . ."  The Court also rejected the USPTO's argument that "administrative exhaustion" should apply to proceedings before the USPTO. Nonetheless, held the Court, district courts may consider the proceedings before and the findings of the USPTO in deciding what weight to afford an applicant's newly admitted evidence.

The Hyatt case is important for those applicants who choose to bring a civil action under §145. For more information, please contact Fitch Even partner Allen E. Hoover, the author of this alert.

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