Under 35 U.S.C. §
2, the U.S. Patent and Trademark Office (USPTO) is responsible for granting and
issuing patent rights to inventors. Section 101 clarifies that “[w]hoever invents
or discovers any new and useful process, machine, manufacture, or composition
of matter, or any new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this title.” 35 U.S.C.
§ 101. Thus, an inventor must file a patent application with the USPTO where a
patent examiner determines whether the inventor is entitled to a patent. But
what happens if the patent examiner gets it wrong?
applicant can attempt to convince the examiner that the examiner is wrong. Obviously,
that doesn’t always work out because examiners are humans and thus fail to
maintain a perfectly objective viewpoint. Plus, we all make mistakes. It is a
simple fact that there will be times when a patent examiner simply comes to the
times, the applicant can request the Patent Trial and Appeal Board (PTAB) to review
the application and the examiner’s decision. Without getting into the cloud of
contention surrounding the PTAB, let’s assume that the PTAB also comes to the
wrong conclusion. Now, the applicant must take his/her case to the Courts.
Now let’s assume
that the applicant successfully convinces the Court that he/she is entitled to
patent rights. Finally, a win, but at what costs? Let’s remove the costs to
file the application from the equation, as those fees were expected and would
have occurred if the application was initially allowed. The costs to get to
this point include the legal fees expended responding to the examiner each time
the examiner rejects the application, the costs associated with the PTAB review,
the applicant’s attorney’s fees and court costs for the court case, and finally
the USPTO’s attorney’s fees. No that is not a typo, the applicant must pay for
the USPTO’s attorney’s fees even though the applicant won the case. See Nantkwest,
Inc. v. Matal, No. 2016-1794 (Fed. Cir. June 23, 2017). In
Nantkwest, Inc. v. Matal, the Court required the prevailing applicant to
pay the USPTO $78,592.50 to cover the USPTO’s attorney’s fees even though the
USPTO lost the case and was required to issue the applicant a patent.
I am an
intellectual property attorney, not claiming to be an expert in any other areas
of the law. Yet, I am not aware of any other areas of law where the prevailing party
is required to pay for the losing party’s attorney’s fees. There are
“exceptional” cases, in which the losing party is responsible for the prevailing
party’s attorney’s fees, but requiring the prevailing party to pay the losing
party’s attorney’s fees seems incredibly unjust in my opinion. If we break this
down, the applicant must fight the USPTO throughout every stage until the
applicant is finally awarded the patent to which he/she is legally entitled,
all while paying the USPTO and its attorney to unjustly prevent the applicant
from receiving said rights.
ruling in Nantkwest, Inc. v. Matal, is scheduled to be reheard. As an
attorney that still believes in justice and fairness, I pray that the Federal
Circuit overturns this decision and finds that the USPTO is responsible for its
own attorney’s fees, especially when the USPTO is on the wrong side of the law.