Attorneys’ Fees included under “All the Expenses”June 27, 2017

On June 23, 2017, the Federal Circuit released a decision allowing the USPTO to recover attorneys’ fees under 35 U.S.C. § 145. According to § 145:


                “[a]n applicant dissatisfied with the decision of the [PTAB] . . . may, unless appeal has been taken to the United States Court of Appeals for the Federal Circuit, have remedy by civil action against the Director in the United States District Court for the Eastern District of Virginia . . . All the expenses of the proceedings shall be paid by the applicant.”

The question presented to the Federal Circuit was whether § 145’s “[a]ll the expenses of the proceedings” provision authorizes an award of the USPTO’s attorneys’ fees.

To begin, the Federal Circuit looked to Congress’s intent in shifting the financial burden to the applicants through this statute. The court emphasized that it was Congress’s intent to impose such a heavy financial burden to “deter applicants from exactly the type of procedural gaming that concerns the Director[.]”

Next, the court addressed the Dissent’s viewpoint using the American Rule, which requires litigants to pay their own attorneys’ fees win or lose, unless a statute or contract provides otherwise. The court expressed doubt that the Rule applied to this section, but ultimately concluded that even under the Rule, § 145’s language of “all expenses” includes the USPTO’s attorneys’ fees.

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