Two recent decisions should strongly influence any decision as to how challenge Patent and Trademark Office decisions in court. Parties have two options: bring a civil action in district court against the PTO (which has the advantage of a de novo trial, with new evidence allowed and no deference to the PTO), or appeal to the Federal Circuit (deferential review, limited to the record before the PTO).
But recent decisions (one for trademarks, one for patents) now require challengers to pay the PTO’s legal fees for district court challenges – win or lose. Fees awarded have been significant – in one case exceeding $75,000. Appeals to the Federal Circuit, in contrast, do not require payment of the PTO’s fees.
Companies deciding how to appeal an adverse PTO decision must now balance the advantages of de novo review in district court against the prospect of paying out heavy fees to the PTO. Unless there is a strong reason to take the district court option (and the IP involved is very valuable), the better option in most cases is an appeal to the Federal Circuit.