Zurko, Gartside, and Lee: How Might They Affect Patent Prosecution?

Interactions between the PTO and the courts are more complex than for most agencies. PTO decisions may be challenged not only directly but also collaterally. In the latter context, the Supreme Court has sometimes been critical of the lax standards applied when issuing patents. While being upheld in collateral review is the ultimate issue of concern to patentees, patents must first be obtained. Thus, this paper focuses on direct challenges to PTO actions--and more specifically, on the review arising under 35 U.S.C. §§ 141-44 as addressed in Zurko, Gartside, and Lee. Since the Supreme Court reversed the Federal Circuit\u27s Zurko decision, the applicability of the Administrative Procedure Act (APA) standards of review to both statutory and non-statutory review has been clear. Discussion of those standards has, thus far, been focused quite narrowly, but patent prosecutors should be mindful of the standards\u27 potentially broad application