EVW Partner Authors Supreme Court Brief In Important IP Case


Eaton & Van Winkle Partner Authors Supreme Court Brief and is Quoted in Bloomberg Law Regarding Important Ongoing Issue for IP Owners

Eaton & Van Winkle partner Charles E. Miller, Ph.D is the principal author of the New York Intellectual Property Law Association’s amicus brief filed in support of Milo Shammas’ petition for writ of certiorari to the United States Supreme Court in a case involving a trademark registration application.   The case challenged the Patent and Trademark Office’s apparent new strategy of seeking attorney fee awards as a means of discouraging civil actions against the PTO.  At issue in Mr. Shammas’ petition was whether the PTO can include attorney fees in its tally of “expenses” that can be recovered from the plaintiff (Shammas) in a civil action against the Government under a section of the Lanham Trademark Act.

Although the Supreme Court denied certiorari in the Shammas case, essentially the same issue is likely to arise again very soon in the appellate courts as a result of an Eastern District of Virginia ruling in which the PTO’s attorney fees argument was rejected in a pending patent case, NantKwest v. Lee.

Dr. Miller was quoted in Bloomberg Law saying he expected the PTO to appeal the district court decision — “[w]hichever side loses at the Federal Circuit in NantKwest will likely petition for certiorari.” This will, again, bring the attorney fees issue to the Supreme Court.  Dr. Miller further stated to Bloomberg Law: “[s]uch a petition would stand a much better chance of being granted” given that a greater number of civil actions are filed against the PTO in patent cases than trademark cases.

Currently, applicants for U.S. trademark registrations and patents who are dissatisfied with PTO decisions rejecting their applications potentially face large attorney fee awards if they opt for judicial recourse by suing the PTO in district court rather than appealing to the Federal Circuit.  The threat of such awards is likely to have a chilling effect on decisions to challenge the PTO’s adverse administrative rulings, regardless of the merits.  Eaton & Van Winkle will continue to follow this important issue.

Eaton & Van Winkle attorneys have substantial experience in trademark, patent, and copyright prosecution, litigation, and licensing. The Firm stands ready to work with company legal teams to address their patent, trademark and other IP matters.  For further information, please contact Charles Miller at cmiller@evw.com or Chris Colvin at ccolvin@evw.com.

©  Eaton & Van Winkle, LLP, 2016.  All rights reserved.  This memorandum was prepared as a service to clients and friends of the firm to report on recent developments that may be of interest to them.  The information in it is general and should not be considered or relied on as legal advice.