Brief of Amicus Curiae Franklin Pierce Law Center on En Banc Rehearing in Support of the United States Patent and Trademark Office, Hyatt v. Kappos, No. 2007–1066 (Fed. Cir., May 24, 2010) (with Pierce Law IP Amicus Brief Clinic)
21 Pages Posted: 24 Jun 2017
Date Written: May 24, 2010
The petitioner’s application has been pending in the USPTO since June 6, 1995, and indeed is based on a series of applications allegedly having priority back to 1975. In the event that Section 145 proceedings are completely de nova, such proceedings could have the effect of prolonging the length of time that the public is subjected to considerable uncertainty. Thus, while the statute provides for a proceeding in the District Court, such a proceeding should not be one that starts afresh but rather is circumscribed so that the applicant is not able to use the proceeding to unduly prolong the entire process. What this means is that the proceedings should be limited to those issues already well developed and that new evidence be limited. Clearly, the rules of evidence in the USPTO are different from the Fed. R. Evid. There will be situations where it is essential that an applicant be given an opportunity to have evidence, and perhaps issues, considered by the District Court that was not (or could not) have been considered by the USPTO. The relevance standard of Fed. R. Evid. 401 and 402 and the limitations of Fed. R. Evid. 403 are adequate tools for the District Court to use in order to manage the process.
Keywords: patent, administrative, USPTO, Section 145, APA, BPAI, Board of Patent Appeals and Interferences, PTAB, Patent Trial and Appeal Board, Hyatt, Kappos
Suggested Citation: Suggested Citation