Under Section 134 of the Patent Act of 1952, if a patent application is denied by the USPTO, the applicant may file an administrative appeal with the PTO’s Board of Patent Appeals and Interferences, with appeal to the Court of Appeals for the Federal Circuit under Section141. Another option is the applicant may file a civil action against the PTO Director under Section 145.
In the case of Kappos, Under Secretary of Commerce for Intellectual Property and Director, Patent and Trademark Office v. Hyatt, the U.S. Supreme Court addressed whether an inventor could be allowed enter evidence he had not provided previously to the PTO in challenging a USPTO rejection.
Pursuant to Section 145, Gilbert Hyatt bad filed a civil action against the USPTO Director and asked for the District Court to consider newly proffered evidence in support of his patent application. The District Court declined to consider the newly proffered evidence and granted summary judgment to the Director. On appeal, the Federal Circuit vacated the judgment, holding that patent applicants can introduce new evidence in Section 145 proceedings, subject only to the limitations of the Federal Rules of Evidence and the Federal Rules of Civil Procedure.
The Supreme Court affirmed, stating that federal judges can review previously unsubmitted patent evidence when inventors challenge a patent rejection by USPTO. Specifically, Justice Clarence Thomas wrote in the unanimous decision there are “no evidentiary restrictions” to be placed on patent application challenges beyond the normal restrictions applicable to federal cases.
The full opinion is available here.