Dyan Finguerra-DuCharme, a partner in Pryor Cashman's Intellectual Property Group, spoke to Law360 about a recent judicial split that has arisen over the U.S. Patent and Trademark Office's controversial stance on attorneys' fees.

In July 2018, the Federal Circuit broke from an earlier Fourth Circuit decision which approved the USPTO's policy requiring patent and trademark applicants who appeal rejections to a district court to pay the agency's legal bills - regardless of who wins. According to the Federal Circuit, and many legal experts, this policy violates the "American Rule" against such awards.

Finguerra-DuCharme found the Federal Circuit's decision well-reasoned, stating the court was correct to hold that, because it is a departure from the American Rule to shift the responsibility of the payment of fees, the statute's language has to be specific and explicit. "Broadly interpreting 'expenses' to mean fees is inappropriate rulemaking by the USPTO that is not consistent with Supreme Court precedent," she told Law360. "The court's outright rejection of [the Fourth Circuit's ruling] is hopefully enough to tee the issue up to the Supreme Court."

More About Finguerra-DuCharme's Practice

With more than 20 years of experience litigating and advising on complex intellectual property matters, Dyan Finguerra-DuCharme has earned the reputation of the go-to lawyer for trademark, trade dress, false advertising, patent and copyright disputes.

She has been recognized as a "Leading Trademark Lawyer" by World Trademark Review's WTR-1000 every year since 2012, and was selected by corporate counsel as a Lexology and International Law Office Client Choice Award winner.

Learn more about her work  here.

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