The Price to Pay for De Novo Review of PTO Decisions

The 1952 Patent Act, 35 U.S.C. §§1 et seq. permits parties dissatisfied with decisions of the United States Patent and Trademark Office (PTO) to seek de novo review in the United States District Courts. 35 U.S.C. §145. Section 145 provides in relevant part that in such cases for de novo review, “[a]ll the expenses of the proceedings shall be paid by the applicant” (the Expenses Provision). Similar language first appeared in the Patent Act of 1836. The Trademark Act of 1946 (Lanham Act) contains a virtually identical provision. 15 U.S.C. §1071(b)(3) (“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.”)