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.
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.
Author(s)
Related Insights
January 14, 2026
Health Care Law Today
Protecting the AI Advantage: Why Patents Are a Critical Growth and Risk-Management Tool for Digital Health Platforms
For CEOs, general counsels, and CTOs, the question is no longer whether patents matter. The question is whether the company has an…
February 23, 2026
Events
International Consumer Products Health and Safety Organizaton 2026 Annual Meeting and Training Symposium
On February 23-26, the International Consumer Products Health and Safety Organization (ICPHSO) will host its 33rd Annual Meeting and Training Symposium in Orlando, Florida. This flagship event brings together global product safety professionals for four days of collaboration, learning, and networking.
February 18, 2026
Events
2026 CPG Legal Forum
On February 19, Foley partners Erik Swanholt and Kate Wegrzyn will speak at the Consumer Brands CPG Legal Forum in Frisco, Texas. Swanholt, chair of the firm’s Consumer Products Team, will serve on the panel “Take Cover from Risky Business: Insurance Considerations for Mass Tort, Class Action, Supply Chain Disruption and Recalls.” Wegrzyn, chair of Foley’s Supply Chain Team, will participate in the panel “Tariff-ied Yet? Untangling Legal Links in the Supply Chain from Ports to Courts.”