News & Analysis as of

Patent Litigation 35 U.S.C. § 145

McDermott Will & Emery

Update: Absent Explicit Statutory Language? The American Rule Still Applies

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit updated its earlier opinion to remove language ascribing motive to a prolific inventor’s actions before the US Patent & Trademark Office (PTO). Hyatt v. Hirshfeld, Case Nos....more

McDermott Will & Emery

Absent Explicit Statutory Language? The American Rule Still Applies

The US Court of Appeals for the Federal Circuit vacated a district court’s award of attorney’s fees under the prevailing party rule but affirmed the district court’s denial of the US Patent & Trademark Office’s (PTO) request...more

McDermott Will & Emery

Submarine Sunk: Patent Prosecution Laches Pops GATT Bubble

McDermott Will & Emery on

Addressing for the first time whether the US Patent & Trademark Office (PTO) can assert prosecution laches as a defense in a civil action brought under 35 U.S.C. §145, the US Court of Appeals for the Federal Circuit held that...more

Knobbe Martens

Bulk-Filed Patent Applications Claiming Distant Priority Trigger Prosecution Laches

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HYATT v. HIRSHFELD - Before Reyna, Wallach, and Hughes. Appeal from the United States District Court for the District of Columbia. Summary: The PTO met its burden to prove prosecution laches for bulk-filed patent...more

Knobbe Martens

Patent Applicant Not Required to Pay PTO’s Attorneys’ Fees in District Court Suit to Obtain a Patent

Knobbe Martens on

PETER V. NANTKWEST, INC. Before Sotomayor, Roberts, Ginsburg, Breyer, Alito, Kagan, Gorsuch, and Kavanaugh. Appeal from the Federal Circuit on rehearing en banc. Summary: A patent applicant appealing an adverse decision...more

Snell & Wilmer

SCOTUS to Consider USPTO’s Attorneys’ Fees Policy

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On Monday, the Supreme Court of the United States granted certiorari in Iancu v. NantKwest to resolve a circuit split concerning “expenses” a patent applicant must pay when challenging the United States Patent and Trademark...more

Jones Day

Fear No Fees: No Payment of PTO Attorneys' Fees for District Court Patent Review

Jones Day on

This decision should be a welcome development for patent applicants seeking review. On July 27, 2018, the U.S. Court of Appeals for the Federal Circuit issued its en banc opinion in NantKwest, Inc. v. Iancu, No. 16-1794...more

Knobbe Martens

Nantkwest v. Iancu

Knobbe Martens on

Federal Circuit Summary - En Banc (excl. Chen), Opinion for the court filed by Stoll, joined by Newman, Lourie, Moore, O’Malley, Wallach, and Taranto. Appeal from the United States District Court for the Eastern District...more

Skadden, Arps, Slate, Meagher & Flom LLP

Federal Circuit Denies PTO Attorneys’ Fees

On July 27, 2018, the Federal Circuit ruled that a patent applicant’s obligation to pay the U.S. Patent and Trademark Office’s (PTO) “expenses” for district court proceedings to review patent application rejections does not...more

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