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The state of inter partes review

Law is always subject to change. That's something that experienced attorneys in any practice area know and appreciate, and the truth of the statement is certainly clear in the context of intellectual property law. In just the past few months, several intellectual property cases have made headlines, and that is what we focus on in our inaugural post for this blog.

The first case of note deals with the question of the constitutionality of inter partes review (IPR).

The specific issue before the U.S. Supreme Court was a claim that the IPR process as practiced by the U.S. Patent and Trademark office through its Patent Trial and Appeal Board runs counter to constitutional guarantees that property, in the form of granted patents, can't be taken from its owner without due process through federal courts.

The argument went that the PTAB, being an administrative venue, doesn't meet the standard of judicial oversight. However, in April, the determination of the majority of the high court was that IPR is simply an extension of patent office authority as granted by Congress.

Another case garnering attention involves patent protection strategy efforts by pharmaceutical maker, Allergan. In this matter, Allergan, shifted intellectual property rights on one of its products to the Saint Regis Mohawk Tribe in New York. By selling the rights and then licensing back marketing rights from the tribe, Allergan sought to retain patent protections on the product while avoiding challenges in IPR.

The argument here is for dismissal of the IPRs because Allergan is just a licensee and the tribe is not subject to the law by right of sovereign immunity.

A three-judge panel of the Federal Circuit rejected that claim in July. Now Allergan and the tribe want the full U.S. Court of Appeals bench to consider the case. Regardless of the outcome, some legal observers say others considering making similar deals would be wise to wait until the Supreme Court or Congress address the issue.

What we hope readers will take away from this review is that inter partes review is alive but that protection of assets in a changing and nuanced legal landscape is complicated. Clearly, demonstrated legal skill is important to obtaining optimal outcomes.

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