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School of Law

Strains of UNH Law Amicus Brief Heard in Federal Circuit’s Hyatt v Kappos Decision

The Court of Appeals for the Federal Circuit handed down a decision in Hyatt v Kappos November 8 that was in many ways similar to the points urged by the Law School’s IP Amicus Brief Clinic last May.

According to Professor Jeff Hawley, Director of the IP Amicus Brief Clinic, the Court of Appeals for the Federal Circuit found:  1) No new issues are to be considered in the District of Columbia district court in an action under Section 145; 2) Let the Federal Rules of Evidence decide admissibility; and 3) The record in the USPTO is very important - clearly not a trial de novo.  This was very close to the positions in the school's amicus brief."

Dennis Crouch summarized the decision this way in a PatentlyO blog post, “In a 6-2-1 en banc decision, the Federal Circuit has reversed its prior precedent and held that a patent applicant must be allowed to introduce new evidence in a Section 145 civil action filed to challenge a USPTO refusal to grant patent rights and that the issues implicated by the new facts must be considered de novo.…However, the Court also wrote that an applicant may still be barred from presenting new ‘issues’ in the civil action and that, when no new evidence is presented, that BPAI findings and rulings should be given deference under the Administrative Procedures Act.”

The IP Amicus Brief Clinic, led by Hawley and Professor Ann McCrackin, Director of the Patent Prosecution Program, is one of three Intellectual Property Clinics at the University of New Hampshire School of Law. Students who wrote the brief were Richard Amster, Alex Chan, Gordon Daniell, Stephanie Hernandez-Siman, and Saurabh Vishnubhakat all of whom graduated in May 2010.