Attorneys' Fees included under "All the Expenses"

June 27, 2017
Post by Blog Staff

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.

Post Categories

Comments (0)
Post a Comment

Captcha Image
Return to the Filewrapper Blog

Search Posts


The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.


McKee, Voorhees & Sease, P.L.C. provides this blog for general informational purposes only. By using this blog, you agree that the information on this blog does not constitute legal or other professional advice and no attorney-client or other relationship is created between you and McKee, Voorhees & Sease, P.L.C. Do not consider this blog to be a substitute for obtaining legal advice from a qualified, licensed attorney. While we try to revise this blog on a regular basis, it may not reflect the most current legal developments. We consciously refrain from expressing opinions on this blog and instead, offer it as a form of information and education, however if there appears an expression of opinion, realize that those views are indicative of the individual and not of the firm as a whole.

Connect with MVS

Enter your name and email address to recieve the latest news and updates from us and our attorneys.

Subscribe to: MVS Newsletter

Subscribe to: Filewrapper® Blog Updates

  I have read and agree to the terms and conditions of McKee, Voorhees & Sease, P.L.C.