December 11, 2018
Today, in Peter v. NantKwest, Inc., the U.S. Supreme Court held in a short unanimous opinion that the party who brings a civil action against the USPTO under 35 U.S.C. 145 need not pay the USPTO’s attorneys’ fees as part of the cost of the proceeding. The Court affirmed the 2018 en banc Federal Circuit decision in NantKwest, Inc. v. Iancu, previously discussed here.
As had the Federal Circuit, the Court invoked the “American Rule,” under which parties to any litigation proceeding are presumed to be required to pay their own attorneys. While Congress may overturn the American Rule by statute, this is only the case when Congress so mandates clearly and unequivocally. In this case, the wording of 35 U.S.C. 145 refers to “expense of the litigation,” which the Court determined “has long referred to a class of expenses commonly recovered in litigation to which attorney’s fees did not traditionally belong.”
Today’s decision affirms the longstanding and conventional understanding of the operation of 35 U.S.C. 145 and makes the option of proceeding under this statute more viable than under the USPTO’s interpretation of the statute.
For more information on this case, please contact Fitch Even partner Allen E. Hoover.
Fitch Even IP Alert®