SCOTUS Patent Scorecard Update

On December 11, 2019, the Supreme Court issued Laura Peter, Deputy Director, Patent and Trademark Office v. Nantkwest, Inc.

Nantkwest addresses whether the U.S. Patent and Trademark Office (PTO) may recover its attorney and paralegal fees in certain proceedings.

Before further discussing Nantkwest, some context may be helpful.

To begin with, if the PTO twice rejects a claim or claims in a patent application, the applicant may appeal that rejection to the Patent Trial and Appeal Board (PTAB). 35 U.S.C. § 134.

Then, if the applicant is dissatisfied with the PTAB’s decision, the applicant has three options: (1) appeal the PTAB’s decision to the U.S. Court of Appeals for the Federal Circuit, (2) challenge the PTAB’s decision through a civil action in the U.S. District Court for the Eastern District of Virginia or (3) accept the PTAB’s decision. 35 U.S.C. §§ 141, 145.

Nantkwest arose out of option no. 2 and addresses whether the PTO may recover its attorney and paralegal fees from the applicant.

The Supreme Court rejected the PTO’s argument that the applicant’s obligation to pay “[a]ll the expenses of the proceedings” included an obligation to pay the PTO’s attorney and paralegal fees. That is, the Court held those fees are not recoverable.

That the Supreme Court took the time to decide what “expenses” means and, as such, whether the PTO may recover its attorney and paralegal fees is remarkable. In my opinion, there are far more important issues for the Supreme Court and the PTO than the issues addressed in Nantkwest.

With that, Nantkwest is patent neutral because it does not affect patents as an asset class and maintains the status quo. Indeed, as the Supreme Court noted, the PTO sought its attorney and paralegal fees “for the first time in the 170-year history of [35 U.S.C.] § 145[.]”

In the past 14 years, the Supreme Court has issued 38 patent decisions. The tally: 20 decisions are not pro-patent; 9 decisions are pro-patent; and 9 decisions are patent neutral.