Filing an application with the United States Patent and Trademark Office (USPTO) can be an arduous process. If rejected, applicants can appeal to the Board of Patent Appeals and Interferences (BPAI). From there, unsuccessful applicants can refile or take their cases to court, either filing in district court or appealing directly to the Federal Circuit. Historically, experts say, only a small percentage of applicants file in district court, but some predict that may change as a result of a recent Federal Circuit decision.
The Federal Circuit's Nov. 8 decision in Hyatt v. Kappos affirms that patent applicants are allowed to enter new evidence in a Section 145 civil action filed in response to a USPTO decision to deny patent rights. In a 6-2-1 en banc decision, the Federal Circuit reversed an earlier panel ruling that limited the admissibility of new evidence in such cases.
That's the course inventor Gil Hyatt took after the BPAI rejected his appeal of a USPTO decision. Because a Section 145 action is a new, separate lawsuit and not an appeal, Hyatt took the position that he could introduce new evidence at the district court.
The Kitchen Sink
For Section 145 to be helpful for applicants though, Devinsky says it's essential to establish clearly in the district court that new evidence has been introduced. Without new evidence, the district court is left to rely on the USPTO's fact finding. Devinsky points to new documentary evidence, live witnesses and declarations as strong ways to establish de novo review.