How does a civil action under 35 U.S.C. 145 differ from a direct appeal to the Federal Circuit?
How does a civil action under 35 U.S.C. 145 differ from a direct appeal to the Federal Circuit?
A civil action under 35 U.S.C. 145 differs from a direct appeal to the Federal Circuit in several key aspects:
- Venue: 35 U.S.C. 145 actions are filed in federal district court, while appeals go directly to the Federal Circuit.
- New Evidence: In a 145 action, new evidence can be introduced, which is not possible in a direct appeal.
- Standard of Review: District courts review evidence de novo in 145 actions, while the Federal Circuit is limited to the administrative record.
- Costs: The applicant must pay all USPTO expenses for 145 actions, regardless of the outcome.
As stated in MPEP 1216.02, “The review of the decision of the Board in a 35 U.S.C. 145 civil action is conducted on the basis of the record before the Office, as well as evidence presented to the district court.” This broader scope of review distinguishes 145 actions from direct appeals.
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