Since its announcement, the U.S. Patent and Trademark Office's (USPTO) new policy on the payment of attorneys' fees has sparked much controversy, including several federal court challenges. In the coming months, two federal appeals courts are expected to rule on the legality of the policy - and the legal community will be watching closely.
Under the new policy, the USPTO requires that, after certain types of patent and trademark appeals, the opposing side must reimburse the USPTO for its attorneys' fees, even if the agency loses the appeal. This shift in policy has rankled many intellectual property law experts, who argue it not only violates the general "American Rule" against fee shifting, but makes de novo appeals too expensive for most applicants.
Speaking with Law360, Dyan Finguerra-DuCharme, a partner in Pryor Cashman's Intellectual Property Group, explained, "The USPTO is, for all intents and purposes, rulemaking by imposing exorbitant costs on a party that appeals to the district court. While the district court may be a better option, strategically, for an appeal, most applicants cannot afford to pursue this course, even if the USPTO erred in its decision."
"How can one not be deeply troubled by this reality?" she asked.
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