Oil States, SAS Institute, and New Approaches at the U.S. Patent Office: Supreme Court Holds that Challenges to Patent Validity Need Not Proceed Before an Article III Court and Sends More Claims Into Review, While Incoming PTO Director Signals Greater Deference to Existing Patent Rights

Sullivan & Cromwell LLP - April 25, 2018
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Yesterday the Supreme Court issued two decisions addressing the U.S. Patent and Trademark Office’s (“PTO”) inter partes review (“IPR”) proceedings, in which challenged patents can be invalidated through a condensed hearing before an administrative board empaneled by the PTO. The Court’s decisions will broaden the mandate of the PTO’s Patent Trial and Appeals Board (“PTAB”) to review patent validity—a mandate that has already proven controversial since those procedures were created by statute six years ago.

While these decisions by the Supreme Court affirmed the constitutionality of IPR and arguably expanded the PTAB’s mandate, the newly appointed Director of the PTO, Andrei Iancu, recently indicated that the PTO may undertake rulemaking to reduce the frequency with which issued patents are held invalid and otherwise address issues raised by patentees about the IPR process.