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May 25

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Expert testimony may become common in USPTO appeals

In an April 18, 2012 Opinion, the U.S. Supreme Court in Kappos vs. Hyatt (10-1219) opened the door for expert testimony in federal district court actions in which a patent applicant challenges the USPTO’s denial of an application. The Opinion framed the issue being reviewed as follows:

The Patent Act of 1952 establishes the process by which the PTO examines patent applications. … In a §141 proceeding, the Federal Circuit must review the PTO’s decision on the same administrative record that was before the PTO. Thus, there is no opportunity for the applicant to offer new evidence in such a proceeding. … Unlike §141, §145 permits the applicant to present new evidence to the district court that was not presented to the PTO. This opportunity to present new evidence is significant, not the least because the PTO generally does not accept oral testimony. We have not yet addressed, however, whether there are any limita¬tions on the applicant’s ability to introduce new evidence in such a proceeding or the appropriate standard of review that a district court should apply when considering such evidence. “[Citations omitted]

The U.S. Supreme Court concluded:

[W]e conclude that there are no limitations on a patent applicant’s ability to introduce new evidence in a §145 proceeding beyond those already present in the Federal Rules of Evidence and the Federal Rules of Civil Procedure. Moreover, if new evidence is presented on a disputed question of fact, the district court must make de novo factual findings that take account of both the new evidence and the administrative record before the PTO.”

In presenting evidence for these findings of fact, expert testimony would certainly be useful. For this reason, expect additional appeals of patent denials to be taken to the federal district courts.

About the author

David Nolte

I am a founding principal of Fulcrum Inquiry, an accounting and economic consulting firm that performs damage analysis for commercial litigation, forensic accountings, financial investigations, and business valuations. I am a Certified Public Accountant (CPA) and an Accredited Senior Appraiser (ASA), as well as having other professional credentials. I regularly serve as an expert witness involving damages measurement. My litigation-oriented resume is on Fulcrum's website.

Permanent link to this article: http://betweenthenumbers.net/2012/05/expert-testimony-may-become-common-in-uspto-appeals/

1 comment

  1. Zaine

    Is this different from the beuivaohr of any other large technology company? Companies like IBM, Samsung and Canon file vast numbers of patents. Last year IBM became the first company to file 4,000 patents in a year, and earns about $1 billion a year for its trouble.Yet all this anger directed at Apple for a patent which deals with a method of translating finger movements into scrolling or display transitions.Its hard to buy a mainstream technological product that isn’t made by a company with a large US patent portfolio. Whatever one’s feelings about patents, isn’t it a little unfair to single out a relatively small player like Apple?

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