On February 17, 2010 the Federal Circuit Court of Appeals issued an order granting en banc rehearing of its earlier decision in Hyatt v. Kappos.

Under 35 U.S.C. § 145, an applicant who loses an appeal before the PTO’s Board of Patent Appeals and Interferences may bring a civil action against the PTO in federal court to seek to overturn the PTO’s decision. A Section 145 civil action is the alternative to a direct appeal from the PTO to the Court of Appeals for the Federal Circuit under 35 U.S.C. § 141.

The issue in Hyatt v. Kappos centers on what is the scope of new evidence the applicant may introduce in a civil action under § 145.

In its original opinion in Hyatt v. Kappos, the Federal Circuit held that an applicant has a very limited ability to present new evidence during district court review. The Federal Circuit has now agreed to reconsider this question en banc.

In light of the increasing number of Board appeals, the question of what evidence is available upon judicial review is of increasing importance. Our attorneys will continue to monitor this case, and we will provide updates as information becomes available.