The U.S. Supreme Court has agreed to hear whether an unsuccessful patent applicant may introduce new evidence in a civil action filed under 35 U.S.C. § 145 against the director of the U.S. Patent and Trademark Office (USPTO), where the evidence could have been presented to the agency in her patent application. Kappos v. Hyatt, No. 10-1219 (U.S., cert. granted June 27, 2011). USPTO Director David Kappos also asks the Court to consider whether, when new evidence is introduced under Section 145, the district court must defer to USPTO’s previous decision on the factual issues to which the evidence relates.  

According to the Federal Circuit, from which the appeal was taken, section 145 places no constraints on the evidence that may be introduced and is not limited, as USPTO argued, only to evidence “that could not reasonably have been provided to the agency in the first instance.” The civil action procedure is one of two methods that dissatisfied patent applicants may employ to obtain court review of a Board of Patent Appeals and Interferences decision

.The applicant may simply file an appeal to the Federal Circuit, which reviews the board’s decision on the basis of the USPTO evidence and record, or the applicant may file a section 145 civil action.

The Federal Circuit noted that the section 145 civil action is a “hybrid.” It is not an appeal, according to the court, but it is “also not an entirely de novo proceeding. Issues that were not considered by the Patent Office cannot be raised with the district court in most circumstances, and if no new evidence is introduced, the court reviews the action on the administrative record, subject to the court/ agency standard of review.” If new evidence is introduced after the close of the administrative proceedings, “the district court reviews that issue de novo.” The U.S. Supreme Court will consider the matter during its 2011-2012 term.