Finguerra-Ducharme Discusses Judicial Split Over Controversial USPTO Policy

Dyan Finguerra-DuCharme, a partner in Pryor Cashman's Intellectual Property Group, spoke to Law360 about a recent judicial split that has arisen over the U.S. Patent and Trademark Office's controversial stance on attorneys' fees.

In July 2018, the Federal Circuit broke from an earlier Fourth Circuit decision which approved the USPTO's policy requiring patent and trademark applicants who appeal rejections to a district court to pay the agency's legal bills - regardless of who wins. According to the Federal Circuit, and many legal experts, this policy violates the "American Rule" against such awards.

Finguerra-DuCharme found the Federal Circuit's decision well-reasoned, stating the court was correct to hold that, because it is a departure from the American Rule to shift the responsibility of the payment of fees, the statute's language has to be specific and explicit. "Broadly interpreting 'expenses' to mean fees is inappropriate rulemaking by the USPTO that is