WASHINGTON, April 19, 2012 /PRNewswire-USNewswire/ -- In Tuesday's ruling in Kappos v. Hyatt (No. 10–1219), a unanimous Supreme Court affirmed the lower court decision in Hyatt v. Kappos, 625 F.3d 1320 (Fed. Cir. 2010) (en banc), preserving the right of a patent applicant whose claims have been denied by the Patent and Trademark Office (PTO) to present new evidence and obtain new review of patentability of an invention in a court action brought under 35 U.S.C. sec. 145.
Writing for the Court, Associate Justice Clarence Thomas' opinion concludes, "there are no limitations on a patent applicant's ability to introduce new evidence in a [sec.] 145 proceeding beyond those [that apply in any other court proceeding]. Moreover, if new evidence is presented on a disputed question of fact, the district court must make de novo factual findings that take account of both the new evidence and the administrative record before the PTO."
In an amicus curiae brief filed with the Supreme Court in September 2011, IEEE-USA argued for this result, citing statutory history and noting that "the consequences of narrowing the scope and nature of judicial review pursuant to a [sec.] 145 civil action are likely to have very negative and damaging effects on PTO operations and patent quality, in light of the whole of the patent system."
"We are pleased that a unanimous Supreme Court agreed with the arguments outlined in IEEE-USA's amicus curiae brief," said Keith Grzelak, IEEE-USA vice president of government relations. "This opinion respects 150 years of legal precedent and upholds the rights of inventors and entrepreneurs, ensuring that they will obtain a fair and accurate determination of whether an invention is entitled to a patent.
"It is a victory for U.S. innovation, pure and simple."
The Supreme Court's decision in Kappos vs. Hyatt is online at http://www.supremecourt.gov/opinions/11pdf/10-1219.pdf.
IEEE-USA's amicus curiae brief is available at: http://ieeeusa.org/policy/policy/2011/090611.pdf.
IEEE-USA advances the public good and promotes the careers and public policy interests of 210,000 engineering, computing and technology professionals who are U.S. members of IEEE. For information on the benefits of IEEE membership, see http://www.ieee.org/join
SOURCE IEEE-USA (Institute of Electrical and Electronics Engineers)