Reading through the Federal Circuit's opinion in Christy, Inc. v. United States, No. 19-1738 (Aug. 24, 2020) (a case we've been following since its inception; see here for the complaint), doesn't hold out a lot of hope for something new, because the Federal Circuit already ruled in Golden v. United States, 955 F.3d 981 (Fed. Cir. 2020), that cancellation of a patent via inter partes review is not a taking. That precedent took care of the Christy plaintiffs' main beef.
But they also alleged that the fees they paid to the PTO for issuance and maintenance of the patent were exactions. They wanted the fees they had paid refunded. Why should we have to pay for what the government eventually held was an invalid patent? No dice, held the court. An "exaction" is for money paid "in contravention of the Constitution, a statute, or a regulation." Slip op. at 6 (quoting Norman v. United States, 429 F.3d 1081 (Fed. Cir. 2005)). The issuance and maintenance fees are none of these. First, they don't violate the Constitution because there's no Fifth Amendment claim (see above and Golden). And the statute requires payment of the fees "without regard to any later result of post-issuance proceedings." Slip op. at 7.
So yeah, even if it does seem unfair to have to pay to issue and maintain what turn out to be invalid patents, your remedy isn't to get a court to order those fees returned, but to go lobby Congress to change the statute.
Christy’s payment of standard issuance and maintenance fees—and the PTO’s refusal to refund the fees after 18 of Christy’s 20 claims in the ’640 patent were canceled—did not stem from any mistake or impropriety by the PTO, but followed the requirements of the law. The PTO did not collect fees in excess of its statutory authority, and therefore did not illegally exact those fees. We affirm the Court of Federal Claims’s dismissal of Christy’s illegal exaction claim.
Slip op. at 8.
Christy, Inc. v. United States, No. 19-1738 (Fed. Cir. Aug. 24, 2020)
