“When the United States Patent and Trademark Office’s Patent Trial and Appeal Board (‘Board’) affirms an examiner’s rejection of a patent application, § 145 of the Patent Act permits the disappointed applicant to challenge the Board’s decision in district court. Applicants who invoke § 145 are required by statute to pay ‘[a]ll the expenses of the proceedings’ incurred by the U.S. Patent and Trademark Office (‘PTO’) in defending the Board’s decision, regardless of the outcome. Historically, the agency relied on this provision to recover sums it spent on travel and printing and, more recently, expert witnesses. Now, 170 years after Congress introduced § 145’s predecessor, the agency argues that § 145 also compels applicants to pay its attorneys’ fees.” Does § 145 compel applicants to pay the PTO’s attorneys’ fees?
“We hold that it does not, for the American Rule prohibits courts from shifting attorneys’ fees from one party to another absent a ‘specific and explicit’ directive from Congress. The phrase ‘[a]ll the expenses of the proceedings’ falls short of this stringent standard.”
