Shifting the Burden of Proving Patentability Vel Non in View of Dickinson v. Zurko

Authors

Dawn-Marie Bey, Kilpatrick Stockton LLP

Abstract

This paper addresses the Patent Office's misinterpretation of the Supreme Court's ruling in Dickinson v. Zurko regarding the applicability of the factual review standards of the Administrative Procedure Act (APA) to Patent Office findings. More particularly, in accordance with this misinterpretation, recent guidelines promulgated by the Patent Office violate the APA and controlling precedent.

To date, the proper procedures for prosecuting a patent application have been carefully honed through a myriad of statutes, rules, and controlling legal opinions. The resulting procedures are set forth in exemplary prose in the Manual of Patent Examining Procedure (MPEP) issued and revised periodically by the United States Patent and Trademark Office (Patent Office). Though the MPEP is not citable as controlling authority, patent examiners and practitioners alike rely heavily on the interpretations and examples set forth therein when partaking in the patent prosecution process. These interpretations and examples are revised periodically to reflect changes in the controlling precedent.

In the February 2003 revision to the 8th edition of the MPEP, the authors made a critical revision to section 2144.03 of the MPEP. This change, in essence, allows the Patent Office to shift the burden of proof, in some cases, to the Applicant without properly establishing a prima facie case of unpatentability with the required objective evidence. Interestingly, included in the revised section is the flawed explanation for the Patent Office's revised interpretation. The Patent Office reasons that (1) the Supreme Court's recent decision in Dickinson v. Zurko, 527 U.S. 150, 50 USPQ2d 1930 (1999), holding that the Court of Appeals for the Federal Circuit (Federal Circuit) must apply one of the review standards set forth in the Administrative Procedure Act (APA) and (2) the Federal Circuit's adoption of the APA's substantial evidence test in accordance therewith, reduces the evidentiary requirement for proving a prima facie case of unpatentability. More particularly, the MPEP now states that in some cases, an Examiner may shift to the Applicant the burden to prove patentability through the administrative device of official notice, without first establishing a prima facie case of unpatentability with objective evidence. This interpretation clearly flies in the face of current, long-standing, controlling Supreme Court precedent.

Recommended Citation

Dawn-Marie Bey, Shifting the Burden of Proving Patentability Vel Non in View of Dickinson v. Zurko, 12 J. Intell. Prop. L. 1 (2004).
Available at: https://digitalcommons.law.uga.edu/jipl/vol12/iss1/1