Nantkwest, Inc. v. Matal, Fed. Cir., No. 2016-1794, 11/22/2017. November 22, 2017

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Section 145 of the Patent Act, which permits disappointed patent applicants to seek district court review of PTO decisions, does not permit awards of attorneys' fees to PTO lawyers participating in the proceeding, according to an AIPLA brief to the en banc Federal Circuit. While Section 145 requires plaintiffs to pay “all expenses” of the proceeding, that phrase cannot be construed to include attorneys' fees, and it has not been so construed until recently, even though it has been part of the law for over 100 years.

The Supreme Court has repeatedly held that Congress must be clear and explicit when it intends legislation to deviate from the common law, which has never included fee shifting. The PTO’s interpretation of Section 145 to require plaintiffs to pay its attorneys’ fees, win or lose, is a dramatic departure from common law that lacks such clear and explicit expression by Congress.

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