26 October 2017
Washington DC
Reporter: Barney Dixon

IPR protects the public from erroneously issued patents, says solicitor general


The inter-partes review (IPR) system “serves to protect the public from the unwarranted burdens that erroneously issued patents impose”, according to US solicitor general Noel Francisco.

Francisco’s statement is from a brief he is providing as the Federal Respondent in the Oil States Energy Services v Greene’s Energy Group case at the US Supreme Court, in which the court must decide whether or not IPR, introduced in the America Invents Act (AIA), violates the constitution.

IPR is used at the US Patent and Trademark Office (USPTO) to analyse the validity of existing patents.

Oil States had complained that the process violates the constitution by “extinguishing private property rights through a non-Article III forum without a jury”.

In his brief, Francisco disagreed, arguing that, “consistent with longstanding practice, the US Patent Act authorises USPTO examiners within the executive branch to determine in the first instance whether patents should be granted”.

He said: “That allocation of authority is clearly constitutional.”

He continued: “Like the initial patent examination, IPR serves to protect the public from the unwarranted burdens that erroneously issued patents impose. That public purpose continues to be fully implicated for as long as a patent remains in force.”

Francisco noted that because a patent is presumed valid during litigation, based on the USPTO’s decision to issue it, a mechanism was needed that would verify that the USPTO continued to view the patent as valid.

He explained: “The fact that Congress specified that patents ‘shall have the attributes of personal property’, subject to other provisions of the Patent Act, does not prevent executive branch officials from rescinding an earlier patent grant, subject to judicial review.”

The case is to be heard at the Supreme Court on 27 November 2017.

More news
The latest news from IPPro Patents
Join Our Newsletter

Sign up today and never
miss the latest news or an issue again

Subscribe now
Baker Botts promotes three in IP
21 November 2017 | Texas | Reporter: Barney Dixon
Baker Botts has promoted three intellectual property attorneys to partner, as part of a round of 11 partner promotions
Alibaba in ITC spotlight
20 November 2017 | Washington DC | Reporter: Barney Dixon
Alibaba will be investigated by the US International Trade Commission over the importation and sale of insulated beverage containers, their labels, and packaging materials
MediaTek partners with Anaqua
20 November 2017 | Boston | Reporter: Barney Dixon
Taiwanese semiconductor company MediaTek has selected Anaqua to manage its intellectual property activities, including its inventions and patents
Brazil and China sign PPH agreement
17 November 2017 | Beijing | Reporter: Barney Dixon
The State Intellectual Property Office of China has signed a patent prosecution highway agreement with the Brazilian National Institution of Intellectual Property
Cozen O’Connor hires ex-DLA Piper litigator
17 November 2017 | Washington DC | Reporter: Barney Dixon
Cozen O’Connor has hired ex-DLA Piper litigator Hugh Marbury as member in its intellectual property department
Mewburn Ellis opens Munich office
16 November 2017 | Munich | Reporter: Barney Dixon
Intellectual property boutique Mewburn Ellis has opened a new office in Munich, its first expansion outside of the UK
EPO faces backlash over scrapping of permanent employment contracts
15 November 2017 | Munich | Reporter: Barney Dixon
In an internal memo, the Staff Union of the European Patent Office described the move as “Kafkaesque”