Moskin Discusses De Novo Review of PTO Decisions

Partner Jonathan Moskin has written an article for The Intellectual Property Strategist, “The Price to Pay for De Novo Review of PTO Decisions,” about whether attorneys’ fees should be considered expenses when parties dissatisfied with decisions of the U.S. Patent and Trademark Office seek de novo review in the federal courts.

At issue is a provision of the Patent Act dating back to 1836 that says all expenses of the proceedings shall be paid by the applicant, regardless of who wins the case. For 175 years, when the PTO sought recovery of the expenses of the proceedings, it never sought to include attorneys’ fees. But four years ago, the agency began asserting that the language of the provision includes attorneys’ fees.

Moskin has more than a passing interest in the subject. He is part of a team of Foley attorneys who are appealing to the Fourth Circuit a district court award of $76,000 in attorneys’ fees to the PTO stemming from a trademark dispute with the travel site Booking.com that the agency lost. That award is at odds with a recent en banc decision of the Federal Circuit, which held that the agency’s fee policy violates the so-called American Rule, which holds that the parties generally must pay their own legal fees.