United States patent law provides, in 35 U.S.C. Section 292, that it is unlawful to mark a product with, or use in advertising, a patent number in connection with products that are not patented. This once obscure code section has recently come to life in a dramatic way, with a proliferation of lawsuits filed around the country.

Until very recently, almost all lawsuits filed involving United States patents were either declaratory judgment actions seeking courts to find patents invalid or not infringed, or actions accusing parties of patent infringement. That changed in 2009 when the United States Court of Appeals for the Federal Circuit issued a decision in Forest Group, Inc. v. Bon Tool Company, 590 F.3d 1295, 1301-1303 (Fed. Cir. 2009). The Federal Circuit held that violators of the false patent marking statute faced a $500 fine for each article improperly marked. The Federal Circuit found that the statute explicitly encourages lawsuits under a sub-section of Section 292 authorizing private “qui tam” actions in which one-half of any recovery goes to the United States government.

Those who have tracked lawsuits filed in the wake of the Forest Group decision know that defendants and their counsel have been fighting hard and looking for ways to limit their exposure and reduce the number of these lawsuits now flooding district courts. Gray on Claims has done a fantastic job compiling a list of all such litigation. Numerous cases are now currently pending, and many defendants have already settled rather than face uncertainty over how the law is developing with regard to Section 292.

The latest ammunition for defendants comes from the Northern District of Ohio, which just issued a significant ruling  finding the statute unconstitutional. In that case, the district court held that the qui tam provision in Section 292(b) violates the Appointments and Take Care Clauses of Article II of the United States Constitution, by failing to give the Executive Branch sufficient control over the litigation – and eviscerating the ability of private parties to sue on behalf of the United States.

If upheld on appeal to the Federal Circuit, the ruling may put an end to the numerous false marking cases now pending. Indeed, defendants may wish to consider either a motion to transfer their cases to the Northern District of Ohio, if possible, and move to dismiss immediately once transferred, or motions to stay the litigation in their particular district while any appeal of the decision awaits adjudication at the appellate court level.

Motions to stay the litigation may prove even more receptive in light of other cases currently pending. The Federal Circuit is considering another case challenging the constitutionality of Section 292 under the same issue decided by the Northern District of Ohio in FLFMC v. Wham-O. The Federal Circuit is also weighing In re BP Lubricants USA Inc., a case involving a different issue – whether plaintiffs are required to plead supporting factual allegations sufficient to infer an intent to deceive.

Online and mobile distribution of content is rapidly increasing, and mobile commerce sales are exploding – and for companies in the age of “smart” telephones and social networking sites, if they’re not thinking about doing business in the mobile world, they should be. Yet they must also be vigilant when taking advantage of these opportunities, to positively promote brands and ensure protection of valuable intellectual property rights.

As more companies distribute content using social networking sites and allow customers to use applications on mobile platforms, the need for brand support and IP protection has never been greater. Websites for social networking are ubiquitous, as are computers and mobile devices for accessing them – and they provide infinite opportunities for people to connect and express themselves, and for businesses to engage fans with lively content.

M-commerce uses mobile platforms to connect buyers and sellers in real-time and often in-store, and like social networking, offers incredible capabilities to connect with fans and customers. M-commerce has powerful potential to help companies establish and elevate brands, communicate a message, and solidify a reputation globally.  Mobile devices used by consumers are valuable tools for businesses – to distribute content via applications, encourage sales and interaction, and inform and enable purchasing decisions by providing, for example, bar code scanners, guides, product locators, and mobile payment solutions.

Social networking and m-commerce therefore offer unbounded possibilities for recognition and promotion of both brands and trademarks. However, this carries significant risks that must be carefully managed, as the proliferation of both social networking sites and web-enabled devices for conducting m-commerce has created a global breeding ground for intellectual property violation and brand value problems.

One concern is usernames – brand and trademark owners must proactively ensure that usernames related to or incorporating a brand or trademark are reserved for them. Usernames take on the role of brand identifiers, similar to domain names, except that the worlds of social networking and mobile commerce do not provide a uniform dispute mechanism for misappropriated brands or trademarks in usernames. Misappropriation complaints in the domain name context are handled through the relatively straightforward procedures of Internet Corporation for Assigned Names and Numbers – but not so with social networking sites or m-commerce. While it may be possible to successfully recover a username, there is by no means a uniform mechanism for doing so.

Similarly, brand and trademark owners must be watchful against trademark infringement and dilution, and take steps to make sure any negative or inappropriate references are minimized to prevent damage.  Companies must be alert for instances where a trademark is being used inappropriately, and be attentive to content and comments distributed by users of social networking sites or re-distributed by users of mobile commerce applications through social networking integration that contain information that may be harmful.

Social network sites and m-commerce offer unprecedented capacity to increase brand value and recognition, raise the value of trademark rights to distinguish products or services from others, and nearly limitless opportunities to connect with customers. But huge challenges confront owners of brands and trademarks, who must protect their investment by being constantly alert as the ability to engage with customers changes. Owners must make constant vigilance a priority while keeping customers and fans engaged in a positive way, as it can easily become difficult to deal with and minimize negative and damaging information distributed about a brand or trademark using the many tools now available.

In a recent press release, the United States Patent & Trademark Office (“USPTO”) announced plans to move forward with its proposed “Three Track” patent application processing program. The program, first published for public comment in June 2010, will enable applicants to choose the speed with which their patent application winds its way through the patent examination process.

The USPTO also published a detailed notice of proposed rulemaking on “Track One” of the program, which will give applicants the opportunity for prioritized examination and a final disposition of a patent application within 12 months of its filing date. The proposed filing fee for this “Track One” is currently $4,000, but the USPTO contemplates raising that to $4,800 if discounted fees for small entities are implemented. To meet the 12-month goal, the USPTO will limit the number of applications in the program to 10,000 in the first year.

These efforts are part of the USPTO’s broader plan to reduce pendency and clear the substantial backlog of currently-pending applications. Late in 2010, the USPTO introduced data visualization tools, known as its “patents dashboard” showing various patent pendency statistics. The patent dashboard currently shows an average patent pendency of 34.5 months, with an average time from filing an application to a first office action of 24.2 months and a total application backlog of 718,857. The agency has stated a strategic goal of providing first office actions on all new applications in an average of 10 months from their date of filing by 2014.

This is not the first time the USPTO has tried to get patent applicants to fast-track applications outside the normal method of petitioning to make applications special, and it is confusing that the USPTO will now offer at least three different ways to speed up the examination process. The USPTO also offers an accelerated patent examination program for patent applicants willing to do their own comprehensive prior art search and make detailed statements comparing their invention to results of that search. Under Track One of the new program, patent applicants willing to pay the high filing fee can expect to be accorded priority over regularly-filed patent applications for the life of the application’s pendency. Patent applicants participating in this program will also have to accept limits on the number of claims and filing through the USPTO’s electronic filing system, all of which are also requirements under the accelerated examination program.

The move is part of the Obama administration’s new “Startup America” initiative to encourage innovation as well as startup and entrepreneurial activity. Concerns exist, however, whether initiatives like these will only raise costs without cutting overall pendency at the USPTO, especially with major budgetary issues.  Also, the number of applicants that actually take advantage of the new Track One remains to be seen – as does whether those that do will only be large companies will the financial resources to pay the high filing fees. The possibility therefore exists for deep-pocketed entities to tilt the patent system even further against independent inventors, small businesses, and other patent applicants with limited financial resources, despite the Obama administration’s objectives, and increasing costs for entrepreneurs and startups instead of making it easier for them to participate in the patenting process.  Yet another major concern with the new Track One is whether pendency for other, non-prioritized patent applications will actually increase as resources are devoted to applicants seeking a final disposition within the 12-month period.

Members of the United States Congress recently revived, and then revised, controversial legislation dealing with governmental ability to control access to cyberspace. Now called the Cybersecurity and Internet Freedom Act, the legislation continues to raise eyebrows with free speech advocates, information security experts, and government watchdogs. The proposed law authorizes the United States government to effectively throw what has been labeled an Internet “kill switch” in cases of a national security emergency.

First introduced in June 2010 to amend the Homeland Security Act of 2002 and other laws to improve the security of U.S. cyber and communications infrastructure, the legislation authorizes the President to declare a “national cyber emergency” that would allow control over critical systems. Originally called the Protecting Cyberspace as a National Asset Act, it was re-introduced earlier this year – and commentators immediately sounded alarm bells. The legislation’s revival occurred at the same time that Egypt’s government attracted global media attention for sharply reducing Internet access during recent demonstrations.

In response to criticism, the proposed law’s congressional sponsors renamed it and revised other language specifically referencing an Internet shutdown to reduce unease over the authority conferred. However, those cosmetic changes will do little to ease public concerns. Still left unclear is what specifically constitutes a national cyber emergency, and the reach of the powers conferred on the President. The proposed legislation includes language authorizing the President to order certain measures or actions he deems necessary to preserve the reliable operation of, and to minimize the consequences of, the disruption of critical infrastructure. Adding to uncertainty over what many of the legislation’s terms mean, the President can declare a cyber emergency for 30 days, and extend it for an additional 30 days without Congressional oversight or any meaningful judicial review.

The only real check on the President’s powers, it seems, is that cyber emergency declarations apply only to systems or assets the government itself says constitute critical infrastructure. The proposed legislation tasks the U.S. Department of Homeland Security with establishing and maintaining a list of such systems and assets – which would include those maintained by both public and private entities. Certain requirements must be met to be on this list – the disruption of the system could cause “severe economic consequences” or worse, the system must be “a component of the national information infrastructure,” and a system can’t be placed on the list “based solely” on any First Amendment-protected activities. Despite these apparent limitations, the concerns above remain: left unsaid is how such requirements will be interpreted, and whether any meaningful check is in place to ensure against any over-reach of the government’s authority.

Regardless of these concerns, one cannot help but consider that its provisions reflect a basic technical misunderstanding of how the Internet and web-based computer connectivity operate. Also of concern is how the proposed legislation may make cyber security better at all, since a governmental crackdown in the event of an attack on cyber infrastructure would result in paralysis of personal and corporate communications around the country. It is also interesting to further note the timing of the legislation’s revival, in the wake of both the Egyptian government’s attempt to prevent communications from reaching the world outside of its borders as noted above, and the Wikileaks cables. The possible role of Wikileaks should not be minimized, given the numerous attempts to choke off Wikileaks’ ability to get its information out to the global community, and one must wonder whether a fear of media that cannot be easily controlled is at least in part behind the revival of this legislation.

The latter half of 2010 saw an explosion in patent litigation centered around “smart” mobile phones and their operating systems. As the year draws to a close, this trend shows no sign of slowing down – the latest move came yesterday, when Interval Licensing LLC, a patent holding company, filed an amended complaint in a patent lawsuit that had previously been dismissed. The smartphone angle: the amended complaint includes new allegations of infringement regarding the Android operating system.

Interval Licensing’s move follows an August lawsuit against various online retailers asserting patented technology for automatically displaying content. With yesterday’s filing Interval Licensing added a new dimension, taking specific aim at Google – developer of Android – and in the process, highlighting an important distinction between mobile device manufacturers and software companies in what has been dubbed the “smartphone patent wars.”  This distinction is reflected not only in the kinds of patents being asserted and the inventions they cover, but also in who is suing who. As we see from the involvement of companies like Interval Licensing, this distinction is becoming blurred – meaning that the smartphone patent wars may be far from waning.

Non-practicing entities (NPEs) like Interval Licensing are not at all new to patent litigation. But their presence adds an interesting element to the smartphone patent wars, since they have no incentive to focus only one of the two other types of entities when asserting their patents. Traditionally in the mobile device world, a mobile device manufacturer and a software company would be customers of each other, entering into exclusive relationships to run mobile devices with specific operating systems  – and meaning that a particular device manufacturer would have an incentive to sue a particular software company only if the relationship between them failed in some way. NPEs throw that dynamic into substantial disarray because either type of entity can be a target – and in the case of Interval Licensing’s new lawsuit against Google, the patents asserted may have application to both.

Interval Licensing’s amended complaint asserts two new patents: US Patent No. 6,034,652 and US Patent No. 6,788,314. Both of these patents cover inventions regarding displaying content on a device’s display – systems and methods that present information to a person in a manner that engages the peripheral attention of the person by making use of unused capacity on the device, during inactive periods when a user is not engaged in an intensive interaction with the device, or during active periods but in an unobtrusive manner that does not distract from the primary device interaction. What’s interesting is that these patents are equally applicable to either the operating system or the device using it  – so that that the claims of each patent show could just as well be asserted against mobile device manufacturers using Android, in addition to just the maker of Android itself.

What does this mean? Most likely, it means that the 2010 smartphone patent litigation filings are far from over, and will almost certainly continue at least through 2011 and probably further. Especially if patents like the ones asserted this week against Google are successful at generating revenue for NPEs like Interval Licensing. There’s no reason to think these patents won’t later be asserted against mobile device manufacturers who have chosen to use the Android operating system, or even against other operating systems that also infringe these patents.

And it may not stop there. The recent introduction of “tablet” computers, which are essentially larger versions of smartphones and running on similar operating systems, may well be the focus of a new round of patent litigation. Patents such as those asserted by Interval Licensing could easily be applied to those types of devices as well – especially as they become increasingly popular, with more and more manufacturers pushing to bring their products to market.

 Continuing its recent history of adjudicating an increasing number of cases involving substantive patent law, the United States Supreme Court will hear Microsoft Corp.’s appeal of the Federal Circuit’s decision in Microsoft Corp. v. i4i Limited Partnership, et al. The Court granted a petition for writ of certiorari on November 29, 2010.

For years, the Supreme Court decided a patent case very rarely, something on order of once every 5 years or so. Nowadays, opinions involving patent issues are handed down at least once or twice every term. This trend has been developing for the better part of a decade – this time, the issue to be tackled involves the standard of proof to be used when determining a patent’s validity in court.

The case began when i4i brought suit against Microsoft in March 2007 in the United States District Court for the Eastern District of Texas. The suit alleged that Microsoft infringed US Patent No. 5,787,449 (the “‘449 patent”), entitled “Method and System for Manipulating the Architecture and the Content of a Document Separately from Each Other.” The lawsuit alleged that Microsoft’s Word products were capable of processing documents having elements of a markup language known as Extensible Markup Language, or XML. After a jury trial in May 2009, Microsoft was found liable for infringement of the ‘449 patent and ordered to pay huge damages – more than $200 million (plus interest), and an injunction to stop selling infringing Word products.

Microsoft attempted to invalidate the ‘449 patent at trial using non-patent prior art – an i4i product which Microsoft claimed that i4i failed to disclose to the USPTO during examination. However, Microsoft was unable to overcome the high burden of proof – by demonstrating with “clear and convincing evidence” that the claims of the ‘449 patent were invalid. Microsoft argued in its petition for writ of certiorari that where prior art was NOT considered by the USPTO during examination, the burden of proof should be less onerous. Microsoft is therefore asking the Court to introduce a second standard for proving a patent is invalid, to be used depending on whether the potentially invalidating prior art was available to the USPTO at the time of examination.

While it may appear at first glance to be narrowly focused only on situations where the USPTO did not consider the potentially invalidating prior art during examination, the case could have widespread ramifications. In many patent lawsuits where invalidity is asserted, it is often the case that litigation uncovers potentially invalidating prior art that was never available to the USPTO. It is also the case, however, that different claims in a patent may have different prior art asserted to invalidate them. Further complicating matters, more than one patent is frequently at issue as well. Therefore, courts will likely have to address the issue often – and use different standards of proof for invalidating patents in the same case, and even perhaps different claims within the same patent.  The result may well be difficulties in applying the standard(s) as well as confusion to juries that must try to wrap their arms around whether different burdens of proof have been satisfied.

Last week, the parties negotiating the multi-lateral Anti-Counterfeiting Trade Agreement, or more commonly known as ACTA, finalized their draft document in what has been a long, tedious, and often controversial process. ACTA began in October 2007 in a combined international attempt to address counterfeiting and piracy of goods. If ratified and enacted into law, ACTA may have profound global implications on international copyright and trademark issues.

As a product of negotiations between countries and involving various other governmental and non-governmental organizations, ACTA becomes part of a growing body of international intellectual property treaties. The agreement, however, has a number of nuances that make it exceptional among these treaties, and includes several notable provisions that may conflict with existing laws in many jurisdictions. Scholars and commentators are just beginning to weigh in, and now that the final text has been released, expect to see extensive debate on its implications.

One aspect of ACTA that makes it exceptional is that it was negotiated outside the framework of existing and accepted international intellectual property protocols, notably WIPO and the WTO’s 1994 TRIPS agreement. Initially, the United States, the European Union, Switzerland, and Japan announced that they would begin negotiating what would become ACTA, and were soon joined by a number of other countries. The parties clearly acknowledge and recognize the role of such international protocols and existing intellectual property agreements – yet conducting their negotiations outside of traditional bodies such as WIPO and TRIPS means that they need not listen to the views or voices of anyone outside of their negotiating circle.

ACTA’s stated objective is to strengthen existing intellectual property enforcement. The text of the final draft reveals a strong slant in favor of IP rights holders, which is not unexpected in view of the countries invited to participate. With provisions strengthening civil enforcement, enhancing damages, and increasing border vigilance of intellectual property infringement, ACTA clearly intends to tighten the global framework for protecting the rights of IP owners.

One example of this is an entire section entitled “Criminal Enforcement” which explicitly mandates that parties provide for criminal penalties for intellectual property rights violations. While criminal liability already exists in many countries, one persistent problem is uneven and inconsistent international enforcement. ACTA appears to elevate priority for criminal enforcement of intellectual property rights violations with some broad and sweeping provisions.

One such provision explicitly requires parties to provide criminal penalties and procedures for willful trademark counterfeiting or copyright or related rights piracy on a commercial scale – which means, broadly, acts carried out as commercial activities for direct or indirect economic or commercial advantage.  Other specific examples of where criminal procedures and penalties apply include willful importation and domestic use of labels or packaging using an unauthorized trademark, and unauthorized copying of cinematographic works from a performance in a movie theater. Penalties are specifically meant to include imprisonment and heavy fines.

The language of ACTA also invites questions of whether information privacy is being adequately considered. For example, ACTA includes an entire section acknowledging how quickly and easily intellectual property rights infringement can occur in the digital age. The agreement’s section on Enforcement in the Digital Environment empowers parties to order an online service provider to disclose information sufficient to identify a subscriber whose account was allegedly used for infringement. ACTA also includes detail on how parties should cooperate internationally, encouraging cross-border information sharing and coordination of criminal and border enforcement of violations. Yet another issue with ACTA is the mechanism for domestic ratification – in the United States, for example, it is possible that ACTA may be ratified by executive action rather than by the legislature, circumventing any public debate about the implications of its provisions.

ACTA seeks to enhance protections available to IP rights holders to address increasing counterfeiting and piracy around the globe, noting that effective enforcement of intellectual property rights is critical to sustaining and promoting global economic growth. It remains to be determined, however, whether the real effect of ACTA will simply be to enable an erosion of privacy protections and an increase in criminal penalties without any actual impact on reducing global IP violations.

The United States Patent & Trademark Office (“USPTO”) will extend a pilot program to encourage innovation and stimulate investment in green technologies. In a press release issued late last week, the USPTO announced that its Green Technology Pilot Program will be extended to December 31, 2011. The USPTO also announced an extension of the program to cover applications filed on or after December 8, 2009. Petitions seeking expedited examination of new green technology patent applications may also now be filed simultaneously with the patent application.

The USPTO first began implementing the Green Technology Pilot Program in December 2009.  Under this program, an applicant may have an application accorded special status and therefore advanced out of turn for expedited examination where the application pertains to environmental quality, energy conservation, development of renewable energy resources or greenhouse gas emission reduction.  These applications will be accorded special status without meeting all of the current onerous requirements of the USPTO’s regular accelerated examination program (such as the lengthy examination support document). In order to be eligible for the Green Technology Pilot Program, petitions must state how the application relates to (1) the development of a renewable energy source or energy conservation or (2) the reduction of greenhouse gas emissions.

The USPTO has already revised the program to expand the types of technology covered.  Originally, the Green Technology Pilot Program was limited to applications within a select number of U.S. classifications. The USPTO removed that requirement in May 2010 by allowing more inventions related to green technologies to be accorded special status and receive expedited examination.

The program was also originally limited to applications filed on or before December 8, 2009. That requirement has now been also been lifted, allowing applicants for more recently-filed applications to petition for expedited examination.

Last week’s press release extends the deadline for filing petitions under the Green Technology Pilot Program by more than one year. Originally, the program was set to expire on December 8, 2010. One reason for the extension is that only 1,595 petitions have been filed, out of an originally-set limit of 3,000. According to USPTO statistics, as of November 2, 2010, only 790 petitions for expedited examination have been granted for green technology patent applications. And since the program began, only 94 patents have been issued.

Despite the apparently small numbers of petitions granted and patents issued, the USPTO notes that the program does dramatically reduce the amount of time it takes to receive a first office action. The press release states that the average time between the approval of a green technology petition and the first action on an application is just 49 days. This is indeed much faster than the average time indicated on the USPTO’s “dashboard” Data Visualization Center for a first action for applications that are not accorded expedited examination – which is 25.4 months.

The European Union convened a meeting yesterday of its Competitiveness Council in yet another attempt to achieve harmonization for European patents. Belgium, currently holding the rotating EU presidency, called the meeting to discuss a draft regulation aimed at establishing translation arrangements for a future EU-wide patent system.

The draft regulation was put forward in July in an attempt to address the language and translation issue, one of the main problems that has long burdened European patent applicants with high costs and complexity that arise from the current fragmented system. The draft regulation aimed to have patent procedures conducted in one of three languages (French, German, and English)  – which would considerably reduce the high costs of obtaining patent protection in Europe, but exclude all other languages among the EU member countries. As noted in the proposal for the draft regulation, substantially lower processing fees for a patent covering all EU member states would improve accessibility to patent protection, particularly for small and medium-sized enterprises and public research organizations.

The Belgian presidency had put forth a compromise proposal in advance of the Competitiveness Council meeting (see here and here) in an attempt to resolve the long-standing language and translation issue. One such compromise offered firms the opportunity to have translation costs reimbursed where they were unable to submit requests for patent protection in one of the three languages.

However, the Council’s participants failed to agree on the compromise for the draft regulation. In post-meeting comments, Belgium’s representative and Minister for Enterprise and Streamlining Policy, Vincent Van Quickenborne, noted that talks collapsed when two countries (Spain and Italy) objected that the compromise system would give German and French competitors built-in competitive advantages. A further compromise endorsing the trilingual regime with a six-year “transitional period” was also rejected absent a provision extendig it until automatic translation devices are successfully introduced by the European Patent Office.

 The Council’s press release on the outcome of the meeting can be found here. Van Quickenborne suggested that attempts to resolve the issue would be continued, noting that the EU’s Lisbon treaty “enhanced cooperation” provisions offered other possibilities for one-third or more of member states to agree on a restricted version of common patents and procedures without full approval by all. Nonetheless, no agreement was reached, and these possibilities were left for discussion on another day. The language and translation issue has proved, once again, to be too difficult to overcome.

In what should be good news for patent applicants, an en banc Federal Circuit has reversed course and will now allow introduction of new evidence in district court actions that follow final decisions in the patent examination process.  The ruling in Hyatt v. Kappos expands the post-appeal ability of patent applicants to challenge denials of rights at the United States Patent & Trademark Office (“USPTO”).

Those who track patent applications as they wind their way through examination at the USPTO have no doubt noticed the growing importance of, and reliance upon, decisions of the Board of Appeals and Interferences (“BPAI”).  More and more applicants resort to administrative appeals inside the USPTO for a determination of whether patent rights will be granted. United States law permits a patent applicant to challenge the BPAI’s decisions after exhausting all administrative avenues at the USPTO.

Two options are available for applicants wishing to challenge BPAI decisions. Patent applicants may choose to either appeal BPAI decisions directly to the Federal Circuit, or to proceed to a district court first under 35 U.S.C. § 145. Until now however, patent applicants in such post-BPAI § 145 actions have been restricted from introducing new evidence that had not been presented before the BPAI or during examination.

In the case itself, prolific inventor Gilbert Hyatt exhausted the BPAI process and brought a § 145 action to challenge the rejection of certain claims in U.S. Patent Application No. 08/471,702. The district court in that case refused to allow Hyatt to introduce new evidence in the form of a declaration that had not been presented to the BPAI. Hyatt’s declaration was related to issues that both the examiner and BPAI had considered. The district court reasoned that Hyatt could have presented the declaration earlier, ether before the examiner or the BPAI, and found that Hyatt had no explanation for why he previously failed to do so. The court excluded the evidence based on Hyatt’s negligence.

The Federal Circuit initially upheld the lower court’s decision. After an en banc rehearing, the full Federal Circuit reversed, saying that new evidence could indeed be presented, even if it had been available to the applicant at the USPTO level. The en banc panel held “that 35 U.S.C. § 145 imposes no limitation on an applicant’s right to introduce new evidence before the district court, apart from the evidentiary limitations applicable to all civil actions contained in the Federal Rules of Evidence and Federal Rules of Civil Procedure.” Therefore, the district court’s refusal to allow introduction of Hyatt’s new evidence was improper.

All new evidence in district court § 145 actions will be reviewed de novo. Despite this, the Federal Circuit noted that deference would be given to evidence that the USPTO did indeed consider. As with evidence generally, other procedural rules may limit the admissibility of such new evidence, and the court noted that the Administrative Procedure Act also imposed restrictions on the admission of new evidence in a § 145 action.

The ruling provides hope for further challenge of BPAI decisions where new evidence may help determine whether claims are indeed patentable, and therefore whether powerful rights should be granted. While the ruling’s applicability is limited to § 145 actions, it does represent an improvement to the post-BPAI options available. And, it continues what appears to be a growing trend towards pro-patentee behavior at both the USPTO and in the courts. Which should be welcome news indeed to patent holders and patent applicants alike.