Zurko, Gartside and Lee: How Might They Affect Patent Prosecution?

Abstract:     
Interactions between the Patent and Trademark Office [PTO] and the courts are more complex than for most agencies because agency decisions may be challenged collaterally as well as directly. Having patents upheld on collateral review is the ultimate concern to patentees, but patents must first be obtained.

This paper focuses on direct challenges to PTO refusals to grant - primarily in the U.S. Court of Appeals for the Federal Circuit - since the Supreme Court's landmark Zurko decison.. It argues that, with the exception of its Lee decision, the Federal Circuit has tended to focus unduly on the record, ignoring Zurko's directive to review the PTO as an agency, not a court - and to review the reasoning in its opinions, not its decisons.

Keywords: Patent and Trademark Office, Federal Circuit, patents, statutory, non-statutory, and collateral review, agency reasoning, APA §§ 706(2)(A) and (E)

JEL Classifications: O38

Accepted Paper Series