Intellectual Property: SCOTUS Decides That USPTO Cannot Recover Salaries of Legal Personnel In A Section 145 Patent Application New Civil Action

Expenses Are Not Attorney’s Fees Unless Made Clear Under Statutory Language, Which Was Not The Case.

            In Peter v. NantKwest, Inc., No. 18-801 (U.S. Dec. 11, 2019), the United States Supreme Court decided that the U.S. Patent and Trademark Office (USPTO) cannot recover attorney’s fees—salaries of its legal personnel—under 35 U.S.C. § 145, which authorized the applicant to pay “all expenses of the proceeding” in a section 145 new civil action by a patent applicant.  The American Rule applied here, with “expenses” not clearly encompassing attorney’s fees in a section 145 action.  After all, if the USPTO was not successful (which was not the case here), it would still get attorney’s fees as expenses under the government’s construction.  No way, said SCOTUS, based on American Rule and statutory interpretation principles.