SUPREME COURT TO RULE ON PATENT CHALLENGES BEFORE THE USPTO

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Today the U.S. Supreme Court agreed to hear a case that may decide whether post-patent grant review procedures, such as inter partes review (IPR), are constitutional (Oil States Energy Services LLC v. Greene’s Energy Group LLC, case number 16-712, before the U.S. Supreme Court.). IPR is a proceeding conducted in front of the USPTO in which a challenger can invalidate an issued U.S. patent. Oil States Energy Services filed its appeal to the U.S. Supreme Court after having one of its patents invalidated in an IPR. The issue in the case is whether U.S. patents are a private property right or a public property right. Oil States Energy Services argues that a U.S. patent is a private property right, which can only be invalidated by a jury trial in a federal court. The U.S. government argues that a U.S. patent is a public property right, which can be properly revoked by a government agency, such as the USPTO in an IPR proceeding. Since IPR became available in 2012, the USPTO has granted more than 3,000 petitions and invalidated claims in more than 1,300 patents. IPR offers a faster and less expensive avenue as compared to the federal court system to challenge the validity of a U.S. patent. Additionally, IPR proceedings have been more favorable to patent challengers than to patent owners. If the Supreme Court finds that IPR proceedings violate the U.S. Constitution, then the federal court system will be the only place one has to challenge a U.S. patent. If the U.S. Supreme Court agrees with Oil States Energy Services' position, this decision may have far-reaching implications and may shift the balance of power toward patent owners and away from patent challengers. We will continue to monitor and report on the developments in this case.