USPTO Patent Denial Lawsuits Subject to FRE and FRCP
By Harry Zhou – Edited by Ian C. Wildgoose Brown
Hyatt v. Kappos, No. 07-1066 (Fed. Cir. Nov. 8, 2010) (en banc)
The U.S. Court of Appeals for the Federal Circuit, sitting en banc, vacated and remanded the decision of the U.S. District Court for the District of Columbia, which had ruled that a patent applicant is barred from introducing new facts into evidence in a civil action against the United States Patent and Trademark Office (“USPTO”) brought under 35 U.S.C. § 145. The district court had ruled that the new facts should have been produced to the USPTO in the original application.
The Federal Circuit reversed its precedent, holding that a district court does not review a decision of the USPTO under the Administrative Procedure Act (“APA”)’s deferential court/agency standard on issues where the applicant offers new facts in evidence. The only limitations on the admissibility of new evidence in a § 145 civil action are those “contained in the Federal Rules of Evidence and Federal Rules of Civil Procedure.” The court remanded the case for further proceedings.
271 Patent Blog offers a brief summary of the decision. Patently-O features an analysis of the decision’s likely impacts. IPWatchdog provides a survey of the case law and statutory background relevant to the decision. (more…)