Attorneys' Fees Not Awardable Expenses In Section 145 Actions

In NantKwest, Inc. v. Iancu, No. 2016-1794 (Fed. Cir. Jul. 27, 2018) (en banc), the Federal Circuit decided en banc that attorneys' fees are not "expenses" required to be paid by an applicant who appeals an ex parte prosecution case to the Eastern District of Virginia under 35 U.S.C. § 145. A Federal Circuit panel had earlier reached a contrary result, and the court sua sponte vacated the panel decision to take up the issue en banc.

The Patent Act gives patent applicants two alternative options for judicial review of an adverse PTAB decision in ex parte appeals. First, the applicant may directly appeal to the Federal Circuit, under 35 U.S.C. § 141. Second, under 35 U.S.C. § 145, the applicant may file a civil action against the Director of the PTO in the Eastern District of Virginia.In § 145 actions, applicants can introduce new evidence, and the district court makes do novo findings based on the full record before the court. The district court's decision may then