ABA asks Federal Circuit to Reverse Panel’s Decision Awarding Lawyer Fees in Patent Appeal Cases - Articles

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Posted by: Jarod Word on Jan 24, 2018
The American Bar Association has filed an amicus brief with the United States Court of Appeals for the Federal Circuit, arguing that a provision of U.S. patent law does not give the government the right to be reimbursed for its lawyers' expenses regardless of which side prevails in a court appeal of an administrative patent decision.
The argument focuses on the U.S. Patent and Trade Office's proposed interpretation of Section 145 of the law which states that "all expenses of the proceedings shall be paid by the applicant." 35 U.S.C. § 145. For nearly two centuries, the phrase has been understood universally to mean that the applicant must pay only the PTO's out-of-pocket expenses for the proceedings, like travel costs and expert witness fees.
The ABA contends that an interpretation in a recent case, Nantkwest, Inc. v. Joseph Matal, is a radical departure from that longstanding interpretation, in that it requires the applicant to pay for the government's salaried attorneys any time the applicant invokes Section 145, even if the applicant prevails against the government in the proceedings. The ABA feels that this additional hurdle, on top of the already high costs of a civil action, may be prohibitive for many patent applicants, particularly the poor, small businesses and non-profit organizations. 
The full brief can be found here.