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Q&A with Patent Attorney Mick McCarthy: Supreme Court weighs in: A patent is a public right

May 1, 2018

By: Mick McCarthy

The Oklahoman and NewsOK

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Q: Last week in Oil States v. Greene's Energy, the Supreme Court upheld the constitutionality of inter partes review proceedings in the U.S. Patent and Trademark Office. What's this case about?

A: Until the late 20th century, a challenge to the validity of a granted patent was decided exclusively by a federal court. Beginning in 1980, Congress began modern efforts to evolve administrative agency solutions. That trend was bolstered by the 2011 America Invents Act, which provided for inter partes reviews as a parallel track to federal courts for contesting the validity of a patent. Since inception in 2012, nearly 8,000 such petitions have been filed. Of those petitions that proceeded to final written decisions, 81 percent have found at least some patent claims invalid. In this case, Oil States Energy Services sued Green's Energy for infringing its patent relating to oil field technology. Greene's Energy filed an inter partes review in the Patent and Trademark Office to invalidate the patent. The federal court interpreted the patent favorably for Oil States, but the office ruled it was invalid. Oil States appealed on grounds that Congress cannot confer the government's judicial power to an executive agency to void a patent grant. The appeal made it to the Supreme Court, which held that inter partes reviews are constitutional. READ MORE HERE