IPRs are constitutional, US government claims
The US acting solicitor general has weighed in on a case being mulled over by the US Supreme Court over whether inter partes reviews (IPRs) are constitutional.
In June, the Supreme Court agreed to consider whether IPRs violate the US Constitution, by granting a petition for a writ of certiorari filed by Oil States Energy Services, a provider of services to oil and gas companies.
According to Oil States, the IPR process at the US Patent and Trademark Office (USPTO) violates the right to a jury in an Article III court (a federal court established under Article III of the US Constitution).
The service provider filed its petition in November last year, and the USPTO replied in April, stating that patents are “quintessential public rights” and that Congress is authorised to designate public rights for adjudication in non-Article III tribunals.
On Monday, October 23, Noel Francisco, the acting solicitor general, submitted a brief on behalf of the US.
“Consistent with longstanding practice, the Patent Act authorises USPTO examiners within the executive branch to determine in the first instance whether patents should be granted. That allocation of authority is clearly constitutional,” he said.
Francisco went on to say that the IPR process “serves to protect the public from the unwarranted burdens that erroneously issued patents impose”.
“The longstanding treatment of patents as revocable privileges, and the abundant history of non-judicial patent revocations, confirm the constitutional validity of IPR,” he added.
Oil States, in its petition, argued that patents are private property rights so that actions to invalidate patents must be tried in an Article III forum, not in an agency proceeding.
But, according to Francisco, Oil States’s argument confuses the “distinct concepts of private property and ‘private rights’—those rights that are not integrally related to federal government action”.
The case is set for argument on November 27.
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