March 2, 2011Client Alert

Section 145 Action to Obtain a Patent

National Law Review

In a recent decision, Hyatt v. Kappos (Fed. Cir. 2010), an en banc panel of the Court of Appeals for the Federal Circuit held that a patent applicant’s right to introduce new evidence before the district court in a civil action under 35 U.S.C. § 145 is limited only by the Federal Rules of Evidence and Civil Procedure. An earlier panel had held that the district court properly excluded an inventor’s declaration that was not presented earlier in the patent prosecution. The en banc panel, however, vacated the decision of the district court and remanded.


A § 145 action is one of two paths available to an unsuccessful patent applicant to seek redress. If a patent examiner rejects a patent application, the applicant may first appeal to the Board of Patent Appeals and Interferences (Board) at the U.S. Patent and Trademark Office (PTO). A patent applicant who is dissatisfied with the Board's decision may then appeal the decision in a § 141 action before the Court of Appeals for the Federal Circuit, or in a § 145 action before the District Court for the District of Columbia.


Unlike a § 141 action, a § 145 action allows the patent applicant to introduce new evidence that was not presented to the PTO. The en banc panel in Hyatt v. Kappos held that this right to introduce new evidence is limited only by the Federal Rules of Evidence and Civil Procedure. As a result, while the best practices remain to present all evidence during the PTO proceedings, if new evidence is available, patent applicants should consider a § 145 action instead of a § 141 action so that the new evidence can be introduced.


This article also was published in the National Law Review, an informational and analytical web site providing current legal analysis to those seeking concise and pertinent legal information.

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