The United States court responsible for most patent law developments has created a potentially new route for inventors to obtain a patent.
In Hyatt v. Kappos the Court of Appeals for the Federal Circuit recently reversed decades of patent practice making it possible to litigate in a federal trial court whether an inventor should get a patent or not - with no limits on the evidence that can be introduced. In an en banc opinion of the court's 7-2 ruling, the 35-page majority opinion by Judge Kimberly Moore succinctly holds that "new evidence is admissible under 35 USC 145, subject only to the Federal Rules of Evidence ..."
Innocuous as this sounds at first, the effect will very likely be profound. Section 145 of the patent law allows patent applicants "dissatisfied" by the denial of their patent claims in the U.S. Patent and Trademark Office's appellate process (via the Board of Patent Appeals and Interferences) to file a lawsuit against the director of the Patent Office. Until the Hyatt opinion, the long-standing practice had been to limit new evidence in such a lawsuit to evidence that could not reasonably have been given to the patent office. This limitation was formerly a real impediment to using a Section 145 case to get a patent. The patent office's examination procedures are not equipped to take in expert testimony, demonstrations or fact witness testimony. Federal trial courts deal with these sorts of evidence every day, but the pre-Hyatt practice effectively prevented a dissatisfied patent applicant from telling his whole story in a 145 trial. The Hyatt decision opens the door to any and all kinds of evidence coming into a 145 trial.
The post-Hyatt regime will allow patent applicants the chance to pursue difficult patent applications by putting on a better evidence showing in the district court than they ever could to the patent office. An even greater impact may come from two other implications of the Hyatt opinion. Patentability will be determined by lay judges in the District of Columbia Federal Court (there is no jury in 145 cases) and the defendant is the director of the U.S. Patent and Trademark Office, represented by the underfunded and under-equipped Patent and Trademark Office's Solicitor's Office. These factors may make 145 actions even more attractive to patent applicants because they can bring new arguments and evidence to bear in a potentially more receptive forum. The workload of the District of Columbia District Court is likely to increase as well.
Another wrinkle in the fabric of the post-Hyatt world is that a skillful patent lawyer may be able to speed up the too-often excruciatingly slow processes of the patent office with a 145 action, by skipping the now-typical multiple rounds of rejections, amendments and continuations and opting for a regimen of application, rejection, traverse, final rejection, internal appeal in the patent office, and 145 suit in the District of Columbia District Court.
An easy prediction is that patent lawyers, patent litigators and the federal courts will be dealing with the fallout from the Hyatt decision for years to come.