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Intellectual PropertyFeaturesLitigationLJN NewslettersPatent LitigationThe Intellectual Property Strategist

USPTO Continues to Demand Attorneys' Fees for District Court Appeals

By Judith L. Grubner

Section 145 of the U.S. Patent Act (35 U.S.C. §145) and §21(b) of the Lanham Act covering trademarks (15 U.S.C. §1071(b)) provide for two types of challenges from the decisions of the U.S. Patent and Trademark (USPTO) internal appeals boards — the Patent Trial and Appeal Board (PTAB) and the Trademark Trial and Appeal Board (TTAB). Applicants in cases where there are no adverse third parties can bring a new civil case in the U.S. District Court for the Eastern District of Virginia or the USPTO decision refusing to register a patent or trademark can be directly appealed to the U.S. Court of Appeals for the Federal Circuit. Further appeals from the district court's decisions are to the U.S. Court of Appeals for the Fourth Circuit in trademark cases or to the Federal Circuit in patent cases. Parties in the district court action are allowed to submit new evidence not considered by the TTAB, but parties in direct appeals to the Federal Circuit are not.

In district court patent cases, §145 provides that “all the expenses of the proceedings shall be paid by the applicant.” In the district court trademark cases, §21(b) provides that “unless the court finds the expenses to be unreasonable, all the expenses of the proceeding shall be paid by the party bringing the case, whether the final decision is in favor of such party or not.” Neither statute defines “expenses.” Prior to 2013, the USPTO did not request reimbursement for the salaries of its attorneys and paralegals who worked on the case, only for more common costs, such as filing fees, photocopying expenses, and the like. However, starting in 2013, the USPTO has been requesting reimbursement for the time spent by its attorneys and paralegals on district court challenges to PTAB and TTAB decisions.

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