Kappos v. Hyatt, —US—(2012)
Hyatt’s patent application was rejected as having an inadequate written description of the invention, and the Board of Patent Appeals and Interferences (BPAI)affirmed the rejection. Rather than appeal to the Federal Circuit, Hyatt chose to make a federal case of it by filing a civil action against the PTO Director under §145. In this action, Hyatt submitted a written declaration, explaining how the specification provided an adequate written description of the claimed invention. However, the district court refused to consider Hyatt’s newly proffered evidence, limiting its review to the record before the BPAI, and affirming the rejection. Hyatt appealed to the Federal Circuit, which reversed, holding that it was improper to exclude new evidence submitted during a §145 civil action. On a rehearing, the Federal Circuit en banc again held that an applicant could submit new evidence in a §145 civil action. Director Kappos’s petition for certiorari was granted, and the Supreme Court agreed with the Federal Circuit, which is news in itself, holding that there are no limitations on a patent applicant’s ability to introduce new evidence in a §145 proceeding beyond those already present in the Federal Rules of Evidence and the Federal Rules of Civil Procedure. Furthermore, the Supreme Courtheld that 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 Patent Office. As the Supreme Court noted, the ability to submit evidence in §145 is significant because the additional evidence may also include oral testimony, which the Patent Office generally does not accept.
COMMENT: When faced with a affirmance of a rejection by the BPAI (soon to be the Patent Trial and Appeal Board), a patent applicant should consider whether new or better evidence might make a difference, and if so opt for §145 civil action rather than a direct appeal to the Court of Appeals for the Federal Circuit.