Heads I Win, Tails You Lose: The "Expense" of a De Novo Review of USPTO Decisions

Abstract

Courts have traditionally deferred to the American Rule presumption against awarding attorney’s fees. On February 4, 2019, however, in Booking.com v. USPTO, the United States Court of Appeals for the Fourth Circuit held that the term “expenses” in 35 U.S.C. § 1071 allows the USPTO to recover attorney’s fees when an applicant challenges the denial of its trademark. In contrast, on July 17, 2018, the en banc United States Court of Appeals for the Federal Circuit in NantKwest, Inc. v. Iancu, held that the USPTO was not entitled to recover attorney’s fees pursuant to 35 U.S.C. § 145—the patent analog to 15 U.S.C. § 1071. Both statutes require an applicant to pay “all of the expenses of the proceeding,” even if the applicant proves that the USPTO wrongly rejected their trademark or patent. On March 4, 2019, the Supreme Court granted certiorari in NantKwest to resolve the issue. This Comment argues that the statutory interpretation employed by the Federal Circuit in NantKwest is more faithful to Supreme Court precedent and canons of statutory construction than the interpretation employed by the Fourth Circuit in Booking.com. Accordingly, the Supreme Court should reaffirm the decision in NantKwest and disallow an award of attorney’s fees under 35 U.S.C. § 145 and 15 U.S.C. § 1071.