Typically, patent examiners are the prominent decision-makers controlling whether patent applications are allowed. However, Applicants have the power to change who controls these decisions. For example, each Examiner’s Answer must be approved by a supervisory examiner, so filing an Appeal Brief results in the supervisory examiner reviewing the rejections at hand, the appellant’s arguments, and the examiner’s responses to the appellant’s arguments. (If the supervisory examiner agrees with the appellant, then the application is either allowed or prosecution is reopened with one or more new rejections). So long as prosecution is not reopened, paying the Forwarding Fee subsequent to receiving the Examiner’s Answer results in jurisdiction shifting to the Patent Trial and Appeal Board (PTAB).
On August 18, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Hyatt v. Hirshfeld (Hyatt II), the latest in a line of court rulings regarding a series of much maligned patent applications filed by prolific inventor Gil Hyatt with the U.S. Patent and Trademark Office (USPTO) in the 1990s. While the Federal Circuit’s most recent decision, which denied the USPTO’s request to shift expert witness fees even while the appellate court vacated attorney’s fees awarded to Hyatt, could be seen as a mixed victory for Hyatt, it continues to shine a light on an unfortunate legal situation in which an independent inventor continues to be denied patent rights despite strong evidence that the USPTO dragged their feet on examining Hyatt’s patents.
The Supreme Court ruled in Peter v. NantKwest today that the U.S. Patent and Trademark Office (USPTO) cannot recover the salaries of USPTO attorneys and paralegals who work on civil actions against the USPTO Director in the Eastern District of Virginia. The Court held that the language of Section 145 of the Patent Act, which says that applicants must pay all the expenses of the proceedings for a civil action, “does not overcome the American Rule’s presumption against fee shifting.” The USPTO argued that the Federal Circuit’s en banc 2018 decision holding “all expenses” does not include “expenses that the USPTO incurs when its employees, including attorneys, defend the agency in Section 145 litigation,” is inconsistent with the ordinary meaning of “expenses” and Section 145’s “history and purpose.”
Justices Breyer, Kavanaugh, Ginsburg and Gorsuch and Chief Justice Roberts were among the most active questioners of Malcolm Stewart, representing the government of the United States, and Morgan Chu of Irell & Manella, representing NantKwest, during yesterday’s oral argument in Peter v. NantKwest at the Supreme Court. The question presented in the case is “Whether the phrase ‘[a]ll the expenses of the proceedings’ in 35 U.S.C. 145 encompasses the personnel expenses the USPTO incurs when its employees, including attorneys, defend the agency in Section 145 litigation.” The government’s argument at yesterday’s hearing seemed shaky at best. Stewart himself admitted repeatedly that there was “no good explanation” for the fact that the U.S. Patent and Trademark Office (USPTO) had, as noted in NantKwest’s reply brief “until now…never even sought, much less been awarded, attorneys’ fees under § 145 in the nearly two centuries since its passage.”