Grüneberg and Myers - Intellectual Property Law

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The American Rule Prevails Protecting Access to Courts

In Nantkwest v. Iancu the Fed. Cir. meeting en banc, vacated the panel’s decision and affirmed the district court’s denial of the PTO’s motion for attorneys’ fees incurred by the government in defending Applicants’ appeal of a Board decision in district court.  “All the expenses of the proceedings” does not include attorneys’ fees.  Citing the absence of a “specific and explicit” directive from Congress to depart from the “American Rule” providing that each litigant bears its own attorneys’ fees, win or lose.  The Fed. Cir. rejected the PTO’s argument, citing Shammas v. Focarino, which interpreted a nearly identical provision of the Lanham Act, 15 U.S.C. § 1071(b)(3) that the American Rule only governs the interpretation of statutes that shift fees from a prevailing party to a losing party, noting the primary purpose of the American Rule to protect access to courts. Expenses for travel, printing and, expert witnesses are still available.

Richard Chinn