SCOTUS to rule on USPTO appeal
The US Supreme Court has agreed to hear an appeal from the US Patent and Trademark Office (USPTO) in a dispute over attorneys’ fees in Iancu v NantKwest.
On Monday, March 4, the Supreme Court granted the USPTO’s petition for certiorari in the case, after the US Court of Appeals for the Federal Circuit en banc denied the office’s request for attorneys’ fees last July.
The USPTO petitioned for certiorari in the case last December. The office had a long-standing policy of not seeking attorneys’ fees, but changed its position in 2012.
The dispute arose after the USPTO denied a patent application from biotechnology company NantKwest. The company initiated a section 145 proceeding in an attempt to have the USPTO’s decision reversed in court.
Section 145 of the Patent Act allows parties to challenge a patent decision by the office in court, and provides that the applicant must pay “all the expenses of the proceedings”.
After NantKwest failed to have the USPTO’s decision overturned, the US District Court for the Eastern District of Virginia in May 2017 awarded the office experts’ fees, but not attorneys’ fees.
The USPTO challenged the decision not to award it attorneys’ fees, but the Federal Circuit upheld the district court’s ruling last July.
In its decision, the Federal Circuit said that in order for it to deviate from the “American rule” that requires each party to pay its own attorneys’ costs, Congress would have to enact “specific and explicit” legislation.
The Federal Circuit added that it could not set a precedent “requiring a private litigant to pay the government’s attorneys’ fees without regard to the party’s success in the litigation”.
Despite ultimately siding with NantKwest in the dispute over attorneys’ fees, the Federal Circuit’s decision was split in a 7-4 vote.
In a dissenting opinion, Chief Judge Sharon Prost wrote expressed the view that the broad language used in section 145 allowed for attorneys’ fees under “all the expenses”.
Prost noted the change of strategy from the USPTO on seeking attorneys’ fees in section 145 proceedings, but said that “while [it] has historically refrained from seeking reimbursement of these expenses, it has never affirmatively disclaimed that authority”.
“Given how dramatically the patent and litigation landscapes have changed since the provision was first enacted, it is hardly surprising that the [US]PTO would have felt compelled in recent years to change its strategy”, Prost said.
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