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The Burdens of Proof and Persuasion in a 35 USC 146 Action1

By Charles L. Gholz2 and John F. Presper 3


While 35 USC 146 actions are often loosely referred to as permitting “de novo” review of the board’s decisions, it has been pointed out that it is more accurate to refer to 35 USC 146 actions as permitting “quasi-de-novo” review of the board’s decisions:

The phrase quasi-de-novo is used advisedly because[,] even though new evidence may be introduced[,] the decision of the...[board] may only be reversed if, after viewing the evidence, the district court is satisfied to a thorough conviction that the....[board] was in error.4

Neither party to a 35 USC 146 proceeding is starting from a clean slate. Rather, the action is for review of a decision by a specialized administrative agency the members of which are, by statute, presumed to have relevant expertise.5 Hence, to the extent that either party is trying to get the court to disagree with a holding by the board, To view the complete article you must be logged in
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