Tuesday, 15 May 2018 19:48

Retroactive IPRs

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In Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al., the Supreme Court ruled that an inter partes review (IPR) proceeding does not violate the Constitutional right to be heard in court. But that decision did not consider whether an IPR—a procedure in effect only since September 16, 2012—could be applied to patents filed prior to that date. In fact, the Supreme Court expressly reserved that issue of “retroactive application” for a future case. That is, the Court acknowledged there is a potential controversy regarding the application of IPR to patents filed before the effective date of the IPR procedure.

So, are patents that were filed prior to September 16, 2012, subject to IPR? If not, does that mean those patents are not subject to any inter partes challenge at the PTO? Or does that mean those patents may still be subject to an inter partes reexamination, as that proceeding existed prior to September 16, 2012?

Since the Supreme Court expressly reserved this issue for future cases, and since the IPR procedure remains a popular option, it is likely the Federal Circuit will weigh in on the issue before too long. Which aspects will the Federal Circuit find compelling?

-The reliance on the pre-IPR patent system by inventors who chose not to protect their invention through trade secrets?

-Statistical data that illustrates different substantive results between inter partes reexaminations and inter partes reviews?

-The strength or weakness of the particular patents before the court?

                The statute that created the IPR defines that proceeding to apply to “any patent issued before, on, or after that effective date.” Pub. L. 112-29, § 6(c)(2). But with the express reservation by the Supreme Court, will the statute—or at least the retroactive application of it—survive?

Read 279 times Last modified on Tuesday, 15 May 2018 20:02
James Iaconis

James joined Malloy & Malloy after years of practicing law in Houston and Boston, in boutique IP practice, as in-house IP counsel at a software company, and after running his own practice.  Some of his clients include software companies, healthcare professionals, filmmakers, physicians, and individual inventors.  Prior to earning his J.D. and LL.M. in Intellectual Property, James used his Computer Science degree as a software developer for more than 10 years, designing and writing computer programs in many different industries.