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
Countries should break IP rules to ensure growth, says report
23 February 2018 | London | Reporter: Barney Dixon
Countries such as India and China should break harmonised intellectual property rules to avoid protectionist measures from the US and EU, according to a new report from Gowling WLG
EPO employment proposal halted
22 February 2018 | Munich | Reporter: Barney Dixon
A proposal to scrap permanent employment contracts at the EPO has been halted and a controversial article within it withdrawn, a source close to the Staff Union of the EPO has confirmed
UPC complaint to be heard in 2018
22 February 2018 | Karlsruhe | Reporter: Barney Dixon
The German Federal Constitutional Court will hear the constitutional complaint against the UPC in 2018
Cabinet Plasseraud promotes four to partner
21 February 2018 | Paris | Reporter: Barney Dixon
Cabinet Plasseraud has appointed for intellectual property attorneys to partner
NPE litigation in Europe sees continued growth
20 February 2018 | Brussels | Reporter: Barney Dixon
NPE litigation and enforcement in Europe has increased by an average almost 20 percent year-on-year since 2007, according to a new report from Darts-IP
BakerHostetler hires IP partner
19 February 2018 | Los Angeles | Reporter: Barney Dixon
BakerHostetler has hired Troy Schmelzer as partner in its intellectual property group
Sheppard, Mullin, Richter & Hampton promotes four to partner
16 February 2018 | California | Reporter: Barney Dixon
Sheppard, Mullin, Richter & Hampton has promoted four intellectual property attorneys to partner across its Shanghai, San Diego and San Francisco offices