35 U.S.C. · Part III · Chapter 29, Remedies for infringement of patent, and other actions

35 U.S.C. 285: Attorney fees

In plain English

Section 285 is a single sentence: the court in exceptional cases may award reasonable attorney fees to the prevailing party. It is an exception to the American rule that each side pays its own lawyers, and it applies to both sides. A patentee who wins against a willful infringer and an accused infringer who defeats a baseless suit can both ask for fees.

Octane Fitness defined an exceptional case as one that stands out from others with respect to the substantive strength of a party's litigating position, considering the law and the facts, or the unreasonable manner in which the case was litigated. District courts decide case by case in the totality of the circumstances, looking at factors such as frivolousness, motivation, objective unreasonableness and the need for compensation and deterrence, and the standard of proof is a preponderance of the evidence. Highmark then held that the appeals court reviews that decision only for abuse of discretion.

The Patent Act also deems some cases exceptional. Under section 273(f), an infringer who asserts the prior commercial use defense without a reasonable basis faces a finding that the case is exceptional.

Annotation by Raj Sutariya, Co-founder, PatentAssist.ai. General information, not legal advice; the statute below governs.

Text of 35 U.S.C. 285

Current text, quoted from the official United States Code.

The court in exceptional cases may award reasonable attorney fees to the prevailing party.

Key cases

Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014). An exceptional case is one that stands out from others in the strength of a party's litigating position or the unreasonable manner of litigation, decided in the totality of the circumstances and proved by a preponderance of the evidence.
Highmark Inc. v. Allcare Health Management System, Inc., 572 U.S. 559 (2014). An appellate court reviews a district court's exceptional-case determination under section 285 for abuse of discretion, not de novo.

Practical notes

Fee awards make weak suits expensive. Before asserting a patent, a patent owner should have a claim chart for each accused product and a considered view on validity, because a case that collapses on a point that a reasonable pre-suit investigation would have found is the typical exceptional case.

Litigation conduct matters as much as the merits. Discovery abuse, shifting infringement theories and late-disclosed positions are all factors courts have weighed.

Fees are not automatic for the winner. Most prevailing parties do not recover fees, so budget for a case on the assumption that each side pays its own costs.

Related rules and guidance

37 CFR: No USPTO rules implement this section; it is applied by the courts.
MPEP: Not covered by the MPEP, which deals with examination.