On June 23, 2017, the Federal Circuit held that, whether they win or lose, patent applicants who appeal adverse PTAB decisions directly to a district court must pay the PTO’s attorneys’ fees.
Patent applicants seeking judicial review of Board decisions have two options under the America Invents Act: appeal to the Federal Circuit under 35 U.S.C. § 141, or to the Eastern District of Virginia under 35 U.S.C. § 145. Appeals taken under Section 145 offer certain benefits to the applicant, such as allowing discovery and the introduction of further evidence. Section 145 also provides that applicants must pay “[a]ll the expenses of the proceeding.” When Dr. Hans Klingemann’s patent application directed to a method of treating cancer was rejected as obvious, Nantkwest, the assignee of the application, appealed under Section 145. After prevailing on the merits, the Director of the PTO moved for expert and attorneys’ fees, citing the “all expenses” provision of the statute. Continue reading