Patent Attorney Fees Decision

A new United States Supreme court decision from December 11th, 2019 changes how corporate counsel, business owners and attorneys, the United States over, can consider and deal with defending their patents and trademarks against the US PTO. In other words, if the rule right now is if you appeal a decision of the US PTO in a trademark case, the US PTO can collect its attorney's fees from you if it wins the case. If you appeal a decision from a patent case. The rule prior to December 11th was that the US PTO at least asserted that they could collect their attorney's fees. The Supreme court took this case up. It was Peter vs NantKwest, Inc. and they based their decision to ask for attorney's fees on section 145 35 USC 145 of the patent act, which says that the US PTO was entitled to collect all of the expenses of the proceeding. So that's win, lose or draw. The US PTO claimed that it was entitled to collect fees. What was partly interesting about the NantKwest case, it's the first time since 1839, 174 years, that the US PTO has asked for attorney's fees in this kind of case. Clearly they were looking to shift what was going on and they wanted to start making this a revenue generator for them at least recover their costs as part of their governmental function.  The outcome of the case, the Supreme Court decided that the US PTO could not collect its attorney's fees and this is a big shift because I think it also affects the current state of the law with respect to appeals of trademark matters