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« In re McAward (PTAB 2017) | Main | Webinar on Safeguarding University IP When Structuring Deals in China »

August 31, 2017


I love, love, love your open. I will now follow this case, all because you mentioned Brazil.

I do hope the en banc Federal Circuit overturns the panel decision-giving the Federal government attorneys fees as "costs" for simply appealing is a gross miscarriage of justice.

Not to comment on the specific "who pays for what" issue, but that movie was not a great analogy. A 35 U.S.C. § 145 civil action only occurs when the applicant voluntarily chooses to file such a suit before going to the Fed. Cir. on an appeal. In most cases to introduce evidence the applicant could have introduced ex parte with declarations and exhibits in the application prosecution, or in a continuation, that is now instead subject to cross-examination and rebuttal in a 145 action. Few 145 actions change the outcome.

Paul: no analogy is perfect, of course, but unless the PTO goes the way of the FDA (which would be bad for innovation, no?) it seems unfair to make an applicant pay government attorneys' fees. Just my opinion

Dealing a with a case right now in which the examiner doesn't understand the difference between a Fe (II) salt and a Fe (III) salt - the sort of thing a high school chemistry student is expected to know. It's bad enough that we need to spend thousands of dollars educating the examiner because the PTO doesn't know how to hire technically competent people. But to then add the PTO's attorney fees should this thing eventually go to court via 145? Are you kidding me?

Dr. Noonan,

Is this a question of "fairness" or is this a question of the law?

As I am sure that you are aware, the two are not always the same.

As to whether THIS court has the authority to rewrite the law, solely as a matter of "fairness,"...

well, call me:

Well, Skep, as I understand it the issue is whether the law is interpreted to include attorneys fees (which is a new interpretation). There was no hint here of anything other than an applicant availing herself of the opportunity to have review of the administrative agency's decision.Insofar as policy goes fairness should be a part of that analysis (at least insofar as inventors that are not big companies are concerned).

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