In Peter v. NantKwest, the US Supreme Court held that an applicant is not obligated to pay the USPTO legal personnel (e.g., attorneys and paralegals) under §145.
See the opinion for all the reasons for this holding, but some of the reasons were (1) the term “expenses” alone has never authorized an award of attorney fees to overcome the American Rule (each litigant pays his own attorney fees), (2) the term “all” in §145 cannot transform “expenses” to reach an outlay it wouldn't otherwise include, and (3) Congress has distinguished “expenses” and “attorney’s fees” in the past. Finally, history didn’t seem to help the USPTO as it was the first request for attorney fees in the 170-year history of §145.
See the opinion for all the reasons for this holding, but some of the reasons were (1) the term “expenses” alone has never authorized an award of attorney fees to overcome the American Rule (each litigant pays his own attorney fees), (2) the term “all” in §145 cannot transform “expenses” to reach an outlay it wouldn't otherwise include, and (3) Congress has distinguished “expenses” and “attorney’s fees” in the past. Finally, history didn’t seem to help the USPTO as it was the first request for attorney fees in the 170-year history of §145.
Not a case likely to reach many, but it may help applicants faced with an adverse PTAB decision when the benefit outweighs the increased cost of your attorney fees for the lawsuit over an appeal to the Federal Circuit.
Copyright © 2019 Robert Moll. All rights reserved.
Copyright © 2019 Robert Moll. All rights reserved.
