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 include the PTO's attorneys' fees. The decision is a significant divergence from the U.S. Court of Appeals for the Fourth Circuit's ruling in Shammas v. Focarino, 784 F.3d 219 (4th Cir. 2015), which compelled trademark applicants to pay the PTO's attorneys' fees under a parallel provision in the Lanham Act.

Background

When a PTO examiner rejects a patent application, the decision is reviewable by the Patent Trial and Appeal Board (the Board). If the Board affirms the examiner's rejection, the applicant has two options: (1) under Section 141 of the Patent Act, the applicant may appeal to the U.S. Court of Appeals for the Federal Circuit; or (2) under Section 145, the applicant may file a civil action against the director of the PTO in the U.S.