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.