News & Analysis as of

Fee-Shifting United States Patent and Trademark Office

Knobbe Martens

“All the Expenses” Does Not Mean All: PTO Denied Its Expert Witness Fees

Knobbe Martens on

HYATT v. HIRSHFELD - Before Moore, Reyna, and Hughes.  Appeals from the United States District Court for the District of Columbia....more

Manatt, Phelps & Phillips, LLP

Supreme Court: Patent Office Cannot Be Reimbursed for Attorney and Paralegal Salaries

In Peters v. NantKwest, Inc., the Supreme Court, in a unanimous decision written by Justice Sonia Sotomayor, held that the “all expenses of the proceedings” provision of a 35 U.S.C. § 145 civil appeal does not include the...more

McDermott Will & Emery

Fee Shifting Under § 285 Does Not Apply to Conduct Solely Arising in IPR

McDermott Will & Emery on

Considering for the first time whether fee shifting of § 285 applies to exceptional conduct arising solely from an inter partes review (IPR) proceeding, the US Court of Appeals for the Federal Circuit held that § 285 does not...more

Fish & Richardson

Supreme Court Holds USPTO Cannot Recover Its Attorney's Fees Under § 145

Fish & Richardson on

On December 11, 2019, the Supreme Court of the United States upheld the long-standing presumption that parties are responsible for their own attorney’s fees—holding that the “[a]ll expenses of the proceedings” provision of...more

McDermott Will & Emery

Supreme Court: PTO Not Entitled to Attorney’s Fees in District Court Appeals

McDermott Will & Emery on

In a unanimous decision authored by Justice Sotomayor, the Supreme Court of the United States held that the US Patent and Trademark Office (PTO) is not entitled to recover its attorney’s fees in an appeal to a district court...more

Bradley Arant Boult Cummings LLP

Supreme Court Rejects PTO’s Attempt to Recover Attorneys’ Fees - Intellectual Property News

In Peter v. NantKwest, Inc., the Supreme Court held that the Patent and Trademark Office cannot recover attorneys’ fees against an applicant in a civil action under 35 U.S.C. § 145. An unsuccessful applicant for a patent has...more

Weintraub Tobin

U.S. Supreme Court Strikes Down USPTO’s Request For Attorney’s Fees

Weintraub Tobin on

In a unanimous ruling, the U.S. Supreme Court in Peter v. NantKwest, case number 18-801, struck down the U.S. Patent and Trademark Office’s (USPTO) recent and often-criticized effort to recoup its legal fees – even in cases...more

Mintz - Intellectual Property Viewpoints

Supreme Court Rejects USPTO Attorney Fee Policy

On December 11, 2019, the U.S. Supreme Court struck down the U.S. Patent and Trademark Office’s (USPTO) controversial policy of shifting attorneys’ fees in Peter v. NantKwest, Case No. 18-801. The Court ruled that the USPTO...more

Jones Day

U.S. Supreme Court: "All the Expenses" Does Not Include Attorney’s Fees - In Peter v. Nantkwest, Inc., the Supreme Court...

Jones Day on

The U.S. Supreme Court's recent 9-0 decision in Peter v. NantKwest, Inc., Case No. 18-801, informs strategic cost considerations in appeals challenging adverse decisions issued by the United States Patent and Trademark Office...more

McCarter & English, LLP

No Fees For You – Supreme Court Says USPTO May Not Recover Attorneys’ Fees For Defending Certain Appeals

McCarter & English, LLP on

Under the so-called American Rule, litigants are normally expected to pay their own attorneys’ fees, win or lose, unless a statute clearly permits or requires fee-shifting. In the underlying litigation in Peter v. NantKwest,...more

Skadden, Arps, Slate, Meagher & Flom LLP

Supreme Court Issues Unanimous Ruling Denying PTO Attorneys’ Fees for Section 145 Actions

On December 11, 2019, in Peter v. NantKwest, Inc., 589 U.S. __ (2019), the U.S. Supreme Court issued a unanimous decision holding that the U.S. Patent and Trademark Office (PTO) cannot recover the salaries of its legal...more

Hogan Lovells

Supreme Court: USPTO Cannot Collect Attorney’s Fees Under 35 U.S.C. § 145

Hogan Lovells on

The Supreme Court held that the PTO cannot collect attorney’s fees under 35 U.S.C. § 145, which requires challengers of PTAB decisions to pay all expenses of the proceedings....more

Foley & Lardner LLP

American Rule Prevails; PTO May Not Collect In-House Attorneys' Fees as "Expenses"

Foley & Lardner LLP on

In a short opinion issued on December 11, 2019, the Supreme Court rejected the PTO’s recent attempt to collect attorneys’ fees under a little-used provision of the Patent Act. The decision in Peter v. NantKwest (No. 18-801)...more

Snell & Wilmer

Supreme Court Holds “Expenses” Exclude PTO Employee Salaries in Civil Action Challenges Under the Patent Act

Snell & Wilmer on

The Supreme Court unanimously held that the United States Patent and Trademark Office (PTO) may not recover the salaries of its legal personnel as “expenses” in a civil action challenging an adverse decision by the PTO under...more

McDermott Will & Emery

SCOTUS Rules PTO Not Entitled to Attorney’s Fees in Appeals to E.D. Virginia from Adverse PTAB Decisions

McDermott Will & Emery on

On December 11, the US Supreme Court held that the US Patent and Trademark Office is not entitled to recover its attorney’s fees in an appeal to the Eastern District of Virgina from an adverse decision of the Patent Trial and...more

Cooley LLP

Alert: Supreme Court Rejects USPTO’s Attempt to Extract Legal Fees for District Court Appeals

Cooley LLP on

On December 11, 2019, the US Supreme Court issued a unanimous order in Peter v. NantKwest, holding that a statute allowing the USPTO to recover "expenses" for appeals of patent refusals to a district court does not allow the...more

Faegre Drinker Biddle & Reath LLP

Supreme Court Decides Peter v. NantKwest, Inc.

On December 11, 2019, the Supreme Court of the United States decided Peter v. NantKwest, Inc., No. 18-801, holding that Section 145 of the Patent Act does not require dissatisfied patent applicants who file a civil action in...more

Troutman Pepper

The American Rule Is Still the Rule

Troutman Pepper on

Laura Peter, Deputy Director, Patent and Trademark Office v. NantKwest, Inc., No. 18-801 (December 11, 2019) - Yesterday, the Supreme Court overruled a recent interpretation of 35 USC §145 by the U.S. Patent and Trademark...more

Jones Day

Federal Circuit: “All the Expenses” Does Not Mean “Attorneys’ Fees”

Jones Day on

Last Friday, the Federal Circuit issued its en banc opinion in NantKwest, Inc. v. Iancu, No. 16-1794 (Fed. Cir. July 27, 2018). The Court held, by a 7-4 vote (Judge Chen, the former PTO Solicitor, was recused), that if the...more

McDermott Will & Emery

Poor Litigation Conduct by Prevailing Party Not Enough to Obviate Exceptional-Case Doctrine - Gaymar Indus., Inc. v. Cincinnati...

Addressing the degree to which litigation conduct can preclude the recovery of fees under 35 U.S. C. § 285, the U.S. Court of Appeals for the Federal Circuit vacated the denial of a fee award, finding that sloppy litigation...more

McDonnell Boehnen Hulbert & Berghoff LLP

Rep. Goodlatte Releases Report on H.R. 9

Last week, Rep. Bob Goodlatte, Chairman of the House Judiciary Committee, released a 200-page Report on H.R. 9, "The innovation Act," introduced by Chairman Goodlatte with several co-sponsors earlier this year. The bill sets...more

Morrison & Foerster LLP

House Committee Advances Competing Patent Reform Legislation

With yesterday’s House Judiciary Committee vote, there are now competing, and in some respects significantly different, patent reform proposals under serious consideration in the House and the Senate. Among the most important...more

King & Spalding

Patent Pending: The Outlook for Patent Legislation in the 114th Congress

King & Spalding on

The field of patent law is in a state of flux. Just four years after the America Invents Act (“AIA”) went into effect, Congress is taking up the issue once again, this time seeking to pass legislation to curb abusive patent...more

Knobbe Martens

Medical Device Trade Group Pens Letter in Opposition to Innovation Act

Knobbe Martens on

The Medical Device Manufacturers Association (“MDMA”) has been vocal in lobbying Capitol Hill for what they consider “necessary changes” to patent law for continuing medical device innovation.  Part of that lobbying has...more

Knobbe Martens

Supreme Court Update: Four Important Decisions for IP

Knobbe Martens on

In the recent cases OCTANE FITNESS, LLC v. ICON HEALTH & FITNESS, INC. and HIGHMARK INC. v. ALLCARE HEALTH MANAGEMENT SYSTEM, INC., the U.S. Supreme Court empowered district court judges to award attorney fees to prevailing...more

26 Results
 / 
View per page
Page: of 2

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
- hide
- hide