By Douglas A. Robinson, Principal
In June, the Federal Circuit panel ruled (over Judge Stoll’s dissent) that 35 U.S.C. § 145’s “all expenses of the proceedings” provision requires a patent applicant to pay attorneys’ fees to the USPTO when the applicant elects to appeal a denied application to federal district court.
That decision has now spurred a rare event at the Federal Circuit: a sua sponte en banc review. Specifically, on August 31 the Court issued an order stating a sua sponte request for a poll was conduct, and a majority of the judges voted for en banc review. As a result, the June decision has been vacated, and the Court ordered the parties to file new briefs on the following issue: “Did the panel in NantKwest, Inc. v. Matal, 860 F.3d 1352 (Fed. Cir. 2017) correctly determine that 35 U.S.C. § 145’s ‘[a]ll the expenses of the proceedings’ provision authorizes an award of the United States Patent and Trademark Office’s attorneys’ fees?”
This would seem to signal that a majority of the Federal Circuit believes the panel decision was wrong, and that it will be reversed.