Although the Federal Court's en banc decision in Hyatt v. Kappos strengthens Section 145 and may make it a more popular avenue for disgruntled patent applicants going forward, experts say it's important for appellants to understand the difference between evidence and issues. While Section 145 allows for the introduction of new evidence at the district court, only evidence related to issues raised before the BPAI is admissible.
Paul Devinsky, a partner at McDermott, Will & Emery, suggests that patent applicants create checklists to ensure that all relevant issues they may want considered in court are presented to the board of patent appeals.
"When they respond to a final rejection, patent applicants should make sure they have every issue covered, even if it's not supported fully by evidence," Devinsky says. "They should make sure they have every issue covered so that any issue they may want to ventilate in a subsequent 145 appeal is before the board of appeals after final rejection."