On November 8, 2010, the Federal Circuit issued an opinion in Hyatt v. Kappos that opens the door for patent applicants to introduce new evidence when appealing a Board of Patent Appeals and Interferences (BPAI) affirmance of a final rejection of a patent application.
During patent prosecution, an applicant may introduce evidence — such as an affidavit, prior art, sales data, or other evidence — to help overcome a rejection on the merits. However, 37 CFR 1.116 limits this opportunity to (i) the response to the first Office Action, or (ii) in a later proceeding if the applicant makes a “showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier submitted.” Once the case proceeds to appeal, the ability to introduce new evidence is further limited to situations where the Examiner determines that the new evidence overcomes all rejections.
The new decision in Hyatt v. Kappos allows an applicant to introduce new evidence when and if the applicant appeals a BPAI decision to federal district court.
My colleague Russ Barron recently published a summary of the Hyatt v. Kappos decision. For more information, see Russ’s article by clicking here.
IP Spotlight 
Though things didn’t turn out so well for Hyatt at the district court, the result at the CAFC is a boon for applicants in this type of patent litigation. Plus, the decision makes sense; appealing a BPAI rejection to the district court (rather than going right to the CAFC) would be a redundant money-waster, were it not for the option of presenting new evidence.