If the Board affirms the examiner's rejections under 35 USC §131 a patent applicant has two options: (1) a direct appeal to the Federal Circuit under 35 USC §141; or (2) an action against the PTO Director in federal district court under 35 USC §145. One can also abandon the application or file a continuation, but one unwilling to narrow the rejected claims in the continuation should not expect much.
Harold Wegner notes that a direct appeal to the Federal Circuit is a long shot, because an appellant will not be able to challenge the facts if there is "substantial evidence" to support the facts, which means the Federal Circuit will not reverse the Board’s decision on facts if a reasonable mind might accept the evidence as adequate to support a conclusion. For example, this standard would apply to the Board's factual findings underlying a legal conclusion of obviousness.
In Kappos v. Hyatt, the Supreme Court found no limits on applicants ability to introduce new evidence in a 35 USC § 145 proceeding beyond the limits set forth in the Federal Rules of Evidence and the Federal Rules of Civil Procedure. Further, Supreme Court held if new evidence is presented on a question of fact, the district court must make de novo (i.e., anew) findings that consider the new evidence and the USPTO record.
Companies are stretching to keep legal costs low. The majority had reasoned that "purposely concealed evidence" in the PTO was unlikely since it would undermine the case. However, given today's tight budgets, some may want seek to not file all of the favorable evidence such as that contained in declarations to avoid the expense and risk. However, holding back some favorable evidence may risk some court holding it was "purposely concealing evidence" rather than "reasonable management of legal costs" and that the evidence should not have been admitted by the district court.
In the past, appellants rarely filed a 35 USC § 145 action. Instead, most appealed directly to the Federal Circuit. Now I expect Kappos v. Hyatt will encourage more to file a 35 USC 145 action when (1) a continuation is unlikely to result in claim coverage that properly protects the invention, and (2) appellants need to introduce new evidence in the record in support of patentability.
Finally, I should note those losing an AIA post-grant proceeding at the Board will need to appeal directly to the Federal Circuit and will not be allowed to file a 35 USC § 145 actions
Copyright © 2012 Robert Moll. All rights reserved.
