Supreme Court to hear patent office attorney’s fee case
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Supreme Court to hear patent office attorney’s fee case

The US Supreme Court granted certiorari on Monday in a case involving biotech company Nantkwest in its appeal for a patent application and whether they are required to pay attorney’s fees incurred by the US Patent and Trademark Office (USPTO) in defending its decision to deny in federal court.

A provision of the Patent Act, 35 USC § 145, allows an applicant whose patent has been rejected to seek either a review in the US Court of Appeals for the Federal Circuit under the same facts and record the USPTO used, or they can take it to district court. In district court, the applicant will have a new court review of their patent, provided they pay “all the expenses of the proceedings” incurred by the US Patent and Trademark Office in defending its decision, regardless of the outcome. This often includes sums it spent on travel and printing and, more recently, expert witnesses, but the USPTO argued that this includes attorneys’ fees.

The US Court of Appeals for the Federal Circuit held that it does not because, as a general rule, courts cannot shift attorneys’ fees from one party to another “absent a specific and explicit directive from Congress,” and that the phrasing “all the expenses of the proceedings” does not include attorneys’ fees.