The U.S. Supreme Court recently ruled in a 9-0 decision that patent applicants can introduce new evidence when challenging a patent examiner’s rejection under 35 U.S.C. § 145. The Supreme Court clarified that there are no evidentiary bars other than those articulated in the Federal Rules of Evidence and the Federal Rules of Civil Procedure.
Section 145 Proceedings
When a patent application is denied, the applicant generally has two options—appealing the USPTO’s rejection to the Federal Circuit Court of Appeals under 35 USC § 141, or challenging the decision in district court under § 145. If the applicant chooses to appeal to the Federal Circuit, he or she may rely only upon the record created before the USPTO. However, in § 145 proceedings, the applicant can introduce new evidence.
The Facts of the Case
In Kappos v. Hyatt, Gilbert Hyatt had sought patents relating to a “computerized display system for processing image information” in 1995. After his patent application was rejected, Hyatt appealed. In a subsequent §145 proceeding, Hyatt offered additional evidence of the suitability of his application that he never presented to patent officials. Officials with the USPTO asked the U.S. Circuit Court of Appeals for the Federal Circuit to dismiss the case because Hyatt relied on new evidence.
The Court’s Decision
According to the Court, a district court conducting a §145 proceeding may consider “all competent evidence adduced and is not limited to considering only new evidence that could not have been presented to the PTO.”
As detailed in the decision, if new evidence is presented on a disputed question of fact, the district court must make de novo factual findings that take account of both the new evidence and the administrative record before the PTO. However, the Court noted that the district court may consider whether the applicant had an opportunity to present the newly proffered evidence before the PTO in deciding what weight to afford that evidence.
The Supreme Court’s decision arguably makes §145 a more useful legal tool for inventors who seek to fight the rejections of their patent applications. In light of the Supreme Court’s decision, applicants will not only be able to present new evidence, but also enjoy the benefit of de novo review.