Today, Wed., Apr. 18, 2012, in Kappos v. Hyatt, No. 10-1219, the Supreme Court (Thomas) (Sotomayor and Breyer concur) affirmed the Federal Circuit’s ruling that permits new evidence in an appeal to a district court under Section 145 from an adverse Patent Office ruling on a patent application.

The Court ruled that, in Section 145 appeals to the district court, “there are no evidentiary restrictions” on new evidence beyond those imposed by the rules of evidence and civil procedure.  The district court makes de novo factual findings based on the new evidence – i.e. no deference to the Patent Office’s finding.  But the district court has broad discretion in what weight to give new evidence based on the patent applicant’s prior opportunity to first present the evidence in the Patent Office.  The concurrence further emphasized the district court’s discretion to exclude evidence that was withheld from the Patent Office in bad faith.

Such Section 145 appeals to district courts are infrequent, but may be more favorable now.  The other avenue of appeal from an adverse Patent Office ruling on a patent application is directly to the Federal Circuit, which cannot accept new evidence and must defer to the Patent Office’s factual findings.