Cases Under Review: SCOTUS Will Decide If USPTO Can Charge Its Internal Attorneys’ Expenses Against A Rejected Patent Applicant In 35 U.S.C. Section 145 District Court Proceeding

Case Centers Upon The Meaning Of “All The Expenses Of The Proceeding.”

    On March 4, 2019, the U.S. Supreme Court granted certiorari with respect to a Federal Circuit opinion in order to wrestle with this issue:  “Whether the phrase “[a]ll the expenses of the proceedings” in 35 U.S.C. Section 145 encompasses the personnel expenses the U.S. Patent and Trademark Office incurs when its employees, including attorneys, defend the agency in Section 145 litigation.”  (Section 145 allows for recovery of expenses—the scope of which will be decided by the Court—by the USPTO in a district court action brought by a disgruntled patent applicant after its patent application has been rejected by an examiner, regardless of the outcome.)

    The case is Iancu v. NantKwest Inc., No. 18-801 (U.S., cert. granted 3/4/19).  A divided Federal Circuit, en banc, found USPTO attorney expenses were not recoverable, as discussed in our prior July 27, 2018 post.