NYIPLA Urges Supreme Court to Not Consider USPTO Attorneys' Salaries as "Expenses" Under the Lanham Act

By Charles R. Macedo, David P. Goldberg, Colman B. Ragan, Robert M. Isackson, Christopher Lisiewski, and Barak Bacharach
On June 25th, 2019, the New York Intellectual Property Association (“NYIPLA") filed an Amicus Brief in support of Respondent Nantkwest, Inc.’s petition for writ of certiorari in Peter v. Nantkwest Inc., pending before the Supreme Court.  Nantkwest arises out of a circuit split between the Federal Circuit and the Fourth Circuit, regarding the question of whether the requirement that applicant’s dissatisfied with a USPTO decision who appeal pay “[a]ll the expenses of the proceedings,” includes the salaries of the USPTO attorneys under 35 U.S.C. § 145.  The Federal Circuit held that “expenses” did not include salaries, in this very case, whereas the Fourth Circuit ruled that “expenses” included USPTO salaries in Shammas v. Focarino.  The NYIPLA takes the position that the Supreme Court should hold that “[a]ll the expenses of the proceedings” does not include USPTO attorneys’ salaries.
The NYIPLA first argued that the American Rule (that each litigant pays their own attorneys’ fees) is a “bedrock principle of law” and should be strictly applied to the statute at issue.  This was a point of contention between the circuits, as the Fourth Circuit did not believe the American Rule even applied to statute involved.
Second, the NYIPLA argued that Congress has not “specifically and explicitly” sought to shift fees to appellants of PTAB decisions.  This is the necessary test, according to Supreme Court jurisprudence, in order to overturn the presumption of the American Rule and shift attorneys’ fees to the opposing litigant.
Third, the NYIPLA argued that the USPTO’s recent trend of suing for its own attorneys’ salaries is governmental overreach that “will have a chilling effect on legitimate appeals of PTAB decisions.”  The NYIPLA urged the Court to consider the particular impact this would have on budding inventors who could not afford the prohibitive cost of litigation if they were required to pay USPTO attorneys’ salaries.
Thus, the NYIPLA is urging the Supreme Court to uphold the American Rule, and not make parties liable for attorneys’ fees solely due to the indeterminate phrase “[a]ll the expenses of the proceedings.”

Click HERE to read the Amicus Brief. 
* Colman B. Ragan is President-Elect, Robert M. Isackson is First Vice President and Board Liaison for the Amicus Briefs Committee, Charles R. Macedo is Co-Chair of the PTAB Committee, and David P. Goldberg is Co-Chair of the Amicus Briefs Committee of the NYIPLA.  Each of them appeared on behalf of the NYIPLA in the submission.