Oct 17, 2019

Do “Expenses” Include the PTO’s Attorney’s Fees in a New Civil Action Filed to Challenge the PTO’s REfusal of an Application

Judge Gavel with Money

On October 7, 2019, the Supreme Court heard oral arguments in Peter v. Nantkwest, Inc., Case No. 18-801.  This case addresses the question of whether an applicant must pay the attorney’s fees incurred by the Patent and Trademark Office (“PTO”) in defending against a civil action to challenge the PTO’s refusal of an application to register a patent or trademark – whether the applicant prevails in the action or not.  The Fourth Circuit and the Federal Circuit decided this issue differently, thus creating a Circuit split that the Supreme Court needed to resolve. When an application for a trademark or… Read more


Jun 16, 2017

Fourth Circuit Holds that Policy Requiring Payment of USPTO Attorneys’ Fees Stands

Gavel and Money

On March 31, 2017, the U.S. Court of Appeals for the Fourth Circuit declined to review its decision affirming the district court’s award of attorneys’ fees to the U.S. Patent and Trademark Office (USPTO), approving the new USPTO policy of requesting attorneys’ fees from applicants that appeal to the U.S. district courts. In 2013 the USPTO broke its more than 170-year-old practice of not requesting attorneys’ fees in ex parte appeals to the US district courts and began requiring appellants seeking de novo review to cover the USPTO’s attorneys’ fees. The USPTO claims the authority to obtain these fees based… Read more


Jan 21, 2016

Will the Supreme Court Clarify the Standard for Awarding Attorneys’ Fees under §505 of the Copyright Act?

The Supreme Court has granted certiorari to address the standards to be applied in awarding attorney’s fees under  17 U.S.C.§505 of the Copyright Act. At issue is whether Supap Kirtsaeng, the prevailing defendant in a copyright lawsuit, should be awarded his attorney’s fees.  This is Mr. Kirtsaeng’s second trip to the Supreme Court. The  Court held in Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351 (2013) that under the “first sale” doctrine (codified at 17 U.S.C. §109(a)), Kirtsaeng, as the lawful owner of the particular physical copy of the textbook purchased abroad, was permitted to resell that… Read more