Innovation Asset Blog

Supreme Court ruling could extend patent review process

When U.S. Patent and Trademark Office examiners ultimately deem a patent application unsuitable for award, inventors must typically return to the drawing board to revise their submission. However, a new Supreme Court ruling has paved the way for applicants to supply federal judges with previously unsubmitted evidence when filing a motion to challenge the decision of the patent review board.

According to the Associated Press, the matter dates back to a 1995 patent application in which one inventor sought protection for features relating to a computerized display system. The application did not merit a patent award in the eyes of the USPTO and was rejected. The applicant later protested the decision with an appeal in a U.S. district court that included the submission of supporting materials that were never made available to the original patent review committee.

The USPTO warned that supporting such a motion could set a dangerous precedent. According to PatentlyO, federal officials fear that applicants may feel encouraged to withhold evidence from the patent review board as part of a contingency plan by which they could later present the information to a "nonexpert judge" in a lower court.

The Supreme Court has now unanimously ruled that there should be "no evidentiary restrictions" applied to a rejected applicant's subsequent appeal. As a caveat, Justice Clarence Thomas advised federal judges to consider whether the newly submitted evidence could have reasonably been presented to the PTO in the original application and any possible motives for the applicant's initial lack of disclosure.

Peter Ackerman

Peter Ackerman

Founder & CEO, Innovation Asset Group, Inc.