There are two recent cases, one from the U.S. Supreme Court and one from the U.S. Court of Appeals for the Federal Circuit, that raise questions about the deference that will be given to decisions made by the U.S. Patent and Trademark Office during prosecution of patent applications and the final decision to issue a patent. These cases are Kappos v. Hyatt, 132 S. Ct. 1690 (2012), and Novo Nordisk A/S v. Caraco Pharmaceutical Laboratories, 719 F.3d 1346, 1357 (Fed. Cir. 2013).
In Kappos, a patent applicant brought a challenge to the USPTO’s rejection of an application in district court, under 35 U.S.C. § 145, for a de novo review of the decision by the USPTO to reject the application. The Supreme Court held that because the statute allowed for new evidence (evidence that was not considered by the examiner) to be introduced and considered in Section 145 cases, “it makes little sense for the district court to apply a deferential standard of review to USPTO factual findings that are contradicted by new evidence.”
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