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ARTICLE · 16 AUGUST 2018

Expenses Under 35 U.S.C. § 145 Does Not Include Attorneys' Fees

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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In Nantkwest, Inc. v. Iancu, No. 2016-1794 (Fed. Cir. July 27, 2018), the Federal Circuit, sitting en banc (excl. Chen, C.J.), affirmed the district court's decision ...

United StatesIntellectual Property
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Kara Specht
Kara Specht
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In Nantkwest, Inc. v. Iancu, No. 2016-1794 (Fed. Cir. July 27, 2018), the Federal Circuit, sitting en banc (excl. Chen, C.J.), affirmed the district court’s decision that a patent applicant is not required to pay the USPTO’s attorneys’ fees when challenging the USPTO’s decision in district court under 35 U.S.C. § 145.

The PTAB affirmed a rejection of Nantkwest’s patent application, and Nantkwest filed suit in E.D. Va. under 35 U.S.C. § 145 contesting the rejection. Section 145 states that “[a]ll the expenses” of a challenge under this Section “shall be paid by the applicant.” The USPTO prevailed and moved for reimbursement of its litigation expenses, including attorneys’ fees. The district court denied the USPTO’s motion in-part with respect to attorneys’ fees.

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