Media Coverage
Source: Law360
Media Coverage
Press Contacts: Erik Cummins, Matt Hyams, Olivia Thomas
11.30.17
In June of this year, the Federal Circuit Court of Appeals held in favor of the U.S. Patent and Trademark Office (USPTO) in NantKwest, Inc. v. Matal, finding that under a recent policy change at the USPTO, a patent applicant who appeals to a district court must pay the USPTO’s attorneys’ fees, regardless of the outcome.
Two months later, the Federal Circuit vacated the three-judge panel’s decision, deciding instead to rehear the case en banc. Section 145 provides that “all the expenses of the proceeding shall be paid by the applicant” in such an appeal to the district court. However, for the previous 145 years, the USPTO had never sought attorneys’ fees under the “expenses” provision of the statute of its predecessors.
Rather than appeal directly to the Federal Circuit, NantKwest chose to appeal the USPTO’s denial of their patent application to the Eastern District of Virginia under 35 U.S.C. §145. NantKwest lost its appeal, but the district court denied the USPTO’s request for attorneys’ fees under § 145. The three-judge panel of the Federal Circuit reversed the district court’s decision, relying heavily on a 2015 decision by the Fourth Circuit Court of Appeals awarding attorneys’ fees under a similar provision of the Lanham Act.
Represented by Northern Virginia and Washington, DC Intellectual Property Partner William Atkins, Senior Counsel William West, Jr., and Los Angeles Associate Michael Kreiner, the Federal Circuit Bar Association filed an amicus brief in the en banc rehearing. The Federal Circuit Bar Association argues that neither Congress nor the USPTO have ever understood “expenses” under §145 to include attorneys’ fees and that to find otherwise would be contrary to the strong presumption of the American Rule—that each party pays its own attorneys’ fees.
Read more about the filing on Law360 (subscription required).