Section 145 of the Patent Act authorizes patent applicants to bring suit against the United States Patent and Trademark Office (USPTO) in district court following a loss at the Patent Trial and Appeal Board (PTAB). Under Section 145, patent applicants can present new evidence that was not suitable in a Patent Office appeal, including expert testimony. A 145 action can be quite powerful because it allows the court to decide for itself, without deference to the Patent Office, whether the “applicant is entitled to receive a patent for his invention.” And unlike a Section 141 appeal to the United States Court of Appeals for the Federal Circuit, there is no remand to the Patent Office for a do-over – a Section 145 judgment is final.
The Supreme Court has twice favorably addressed Section 145 actions in recent years, once unanimously. Section 145 actions are a lifeline for patent applicants who believe they did not get a fair shake from the Patent Office, particularly where questions of fact, technical judgment, or the Administrative Record are contested. Section 145 judgments cannot be circumvented by the Patent Office. And the kind of independent, plenary review of patentability by the district court provided by Section 145 actions helps to hold the Patent Office accountable for the benefit of all patent applicants.
Join us on Thursday, July 14, 2022, at 12 PM ET, for an open-ended conversation about the benefits of an action against the USPTO under Section 145. Gene Quinn, founder of IPWatchdog.com and one of the most influential people in intellectual property, will moderate a discussion that will lay out the history and basics of Section 145 actions, recent Section 145 case law, the opportunities and benefits that Section 145 actions provide for patent applicants, and the circumstances when applicants should consider availing themselves of Section 145 actions. Joining Gene will be Andrew Grossman, partner and appellate attorney at BakerHostetler, Professor Michael Greve, a professor at George Mason University School of Law, Dr. Ron Katznelson, President at Bi-Level Technologies, and Dr. Kate Gaudry, partner at Kilpatrick Townsend & Stockton.
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