On Aug. 31, 2017, the Federal Circuit issued a sua sponte order to consider en banc whether the USPTO is entitled to an award of attorneys’ fees, irrespective of a win-or-lose, under 35 USC 145. Nantkwest, Inc. v. Matal, Fed. Cir., No. 2016-1794, 8/31/2017. In a 2-1 decision, a panel had earlier held that the USPTO is entitled to attorneys’ fees from plaintiffs in district court proceedings reviewing the patent office rejections under 35 USC 145. According to the court, the American Rule that each party pay its own attorneys’ fees does not apply where the statutory language explicitly authorizes an award of fees. The panel reasoned that the statutory language “[a]ll the expenses of the proceedings shall be paid by the applicant” entitled an award and noted that the dictionary definition of “expenses” includes attorneys’ fees. In her dissent, Judge Stoll argued that the American Rule erects a strong presumption against fee shifting and Section 145 fails to mention “attorneys’ fees” or provide the necessary congressional directive to make such an award.
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