In June 2017, a panel of the US Court of Appeals for the Federal Circuit ruled that under 35 USC § 145, a court can award attorneys’ fees to the US Patent and Trademark Office (PTO), regardless of whether the applicant, plaintiff or appellant prevails in a district court action against the PTO (NantKwest, Inc. v. Matal, IP Update, Vol. 20, No. 7). In that panel decision, Judge Stoll dissented, arguing that § 145 did not provide the necessary congressional directive to overcome the American Rule’s bar against shifting attorneys’ fees.

The ruling surprised many observers, and the en banc Federal Circuit has now sua sponte vacated the panel decision and reinstated the appeal. NantKwest, Inc. v. Matal, Case No. 16-1794 (Fed. Cir., Aug. 31, 2017) (per curiam: en banc).

The order requests that the parties submit briefs addressing the following question: Did the panel in NantKwest, Inc. v. Matal, 860 F.3d 1352 (Fed. Cir. 2017) correctly determine that 35 USC § 145’s “[a]ll the expenses of the proceedings” provision authorizes an award of the PTO’s attorneys’ fees?

The order set a briefing schedule with appellant’s brief due October 16, 2017, and appellee’s brief due November 14, 2017. The order further provides that amicus briefs “will be entertained.”

If the en banc Federal Circuit reverses the earlier panel decision, it would create a split with the Fourth Circuit, which endorsed the PTO attorneys’ fee entitlement, win or lose, in a 2015 trademark case.