“All Expenses of the Proceedings” as Used in 35 U.S.C. § 145 Does Not Include Expert Witness Fees

September 30, 2021

The Federal Circuit panel in Hyatt v. Hirshfeld, 9 F.4th 1372 (Fed. Cir. Aug. 18, 2021), considered whether the phrase “all expenses of the proceedings” as used in § 145 encompasses expert witness fees.  The district court denied the U.S. Patent Office’s motion to recover such fees in Mr. Hyatt’s civil action challenging the Office’s adverse decisions in his patent applications.  The Office appealed. The appellate panel held that expert witness fees are not included in the “all expenses” language of § 145 after concluding that “the statutory text [of § 145] is not sufficiently specific and explicit to overcome the [American Rule] presumption against shifting fees.” Id. at 1376-83.  The district court’s decision was affirmed. Id.