What are the cost implications of filing a civil action under 35 U.S.C. 145?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-27 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. Filing a civil action under 35 U.S.C. 145 can have significant cost implications for the applicant. The MPEP 1216.02 states: “35 U.S.C. 145 requires that the applicant pay all the expenses of the proceedings, regardless of whether the applicant is successful.” This means: The applicant must pay all expenses incurred by the USPTO in defending the action, including attorney fees, regardless of the outcome. These expenses can be substantial, potentially including travel costs, expert witness fees, and other litigation-related expenses. The requirement to pay all expenses acts as a deterrent against frivolous lawsuits and encourages careful consideration before filing a 145 action. Applicants should carefully weigh the potential benefits of a 145 action against these guaranteed costs when deciding whether to pursue this route of appeal. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Time for Commencing Civil Action Under 141(d) MPEP 1216 Required Applicant Must Pay Proceedings Costs MPEP 1216.02 Required Waive Civil Action by Filing Appeal to Federal Circuit MPEP 1216 63 Days for Appeal or Civil Action After Board Decision MPEP 1216 Final Disposition Required After Civil Action MPEP 1216.02 Termination Date of Civil Action Can Be Found at Office of the Solicitor MPEP 1216.02 Permitted Appellant Must File Civil Action Within 30 Days MPEP 1216 Required Notice of Appeal Must Be Filed With Director MPEP 1216 Required Notice of Appeal Required for Ex Parte Reexamination Appeals MPEP 1216 Required Notice of Appeal Must Provide Sufficient Information for Director to Determine Intervention Right MPEP 1216 Required Other Related FAQs 5 FAQs Collapse How does a civil action ...