You file a patent application. You go through a couple of rounds with the examiner but are unsuccesful in obtaining a patent grant. You appeal to the Board of Patent Appeals and Interferences (“BPAI”) arguing that the examiner is incorrect. At this point, you’ve gone through a lot but there is still more you can do. You can either appeal to the Federal Circuit to review the decision of the United States Patent and Trademark Office (“USPTO”) in rejecting your patent application or file a civil action in the district court for the District of Columbia.
During the examination stage of your patent application at the USPTO, you must submit your evidence in support of patentability before a “final” Office Action issues. When you appeal your case to the BPAI, no new evidence may be submitted. Upon appeal to the Federal Circuit, no new evidence may be submitted for review by the Federal Circuit. Thus, all the appeals must be based on the evidence submitted during the original examination.
However, for a civil action filed in the district court for the District of Columbia, new evidence can be submitted on issues presented during prosecution of the patent application at the USPTO under 35 U.S.C. §145. Hyatt v. Kappos (Fed. Cir. Nov. 8, 2010).
In Hyatt, the USPTO argued that evidence should be admissible at the district court only if the applicant could not have reasonably presented such evidence earlier. The Federal Circuit disagreed. New evidence can be submitted to the district court –but with a few caveats. The new evidence must relate to an issue presented at the USPTO. There is a dual standard of review, namely, a “substantial evidence” with respect to the evidence of record and a de novo review for the new evidence. As such, although the applicant may submit new evidence, the district court may give less weight to the new evidence since the district court now acts as a fact finder with respect to the new evidence.
Based on this case, you should consider the pros and cons of filing your appeal from a USPTO rejection to either the Federal Circuit or the district court for the District of Columbia.
I invite you to contact me with your patent questions at (949) 433-0900 or [email protected]. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.